Multi-jurisdictional Comparative Guide on Legal Professional Privilege and the Implied Undertaking

Intellectual property disputes are commonly multi-jurisdictional. Clients want and expect their disputes to be run in an efficient and strategically aligned manner across jurisdictions. They are keen for their internal and external legal teams to share information and expertise between jurisdictions. Different rules, procedures, and obligations in key jurisdictions can impact this sharing of resources and information flow, and give rise to legal and reputational issues if not managed correctly.

This guide provides a brief overview of two of those obligations: legal professional privilege, and what is often referred to as the implied undertaking.

In common law jurisdictions, legal professional privilege attaches to confidential communications between a lawyer and a client which are made in the context of providing legal advice, or for use in anticipated or existing litigation. Privilege can also extend to the work product of patent or trade mark attorneys/agents, although, whether that privilege applies only to communications relating to provision of professional intellectual property advice or extends to advocacy and litigation services, varies from jurisdiction to jurisdiction. In civil law jurisdictions, the relationship between the client and their legal or professional advisor is protected by a concept of professional secrecy, which differs in its application across these jurisdictions.

The implied undertaking is not generally recognised in civil law jurisdictions. In those common law jurisdictions that recognise the concept of the implied undertaking, it is generally considered to be a prohibition on the use of documents and information obtained through the discovery phase of legal proceedings for any purpose collateral or ulterior to the resolution of the issues in those proceedings, even in equivalent proceedings in other parts of the world between the same or related parties.

What follows is a summary of how each jurisdiction examined treats and manages the concept of privilege in relation to lawyers (both in-house and external), trade mark and patent attorneys, and foreign lawyers. It also summarises the extent and nature of the implied undertaking obligations in those jurisdictions which observe it. Our experience tells us that if your legal teams have an understanding of these rules and obligations, you are more likely to avoid unwanted procedural and strategic issues, and the dispute will run more smoothly and cost effectively.