Defendants have moved to compel the production by plaintiffs of two categories of documents. First, defendants seek documents now in plaintiffs’ possession that reflect communications between various foreign patent agents and an Italian corporation known as Istituto Guido Donegani S.p.A. (“IGD”), which is the licensee and sub-licensor of the patent at issue in this case. Plaintiffs resist disclosure based on their assertion of the attorney-client privilege. Second, defendants urge that plaintiffs be required to obtain, through IGD, any files now held by IGD’s foreign patent agents concerning the prosecution of for
A. A Brief Recapitulation of the Background of the Case
Plaintiff Golden Trade S.r.L. is an Italian corporation and the owner of U.S. Patent No. 4,740,213, which covers a process for producing a random faded effect on cloth and garments. By agreement in November 1987, Golden Trade granted IGD exclusive licensing rights under the United States patent and corresponding foreign patents. As licensee, IGD has arranged for the filing of patent applications in a variety of foreign countries. It has done so through patent agents licensed to practice in these countries, and in the course of those efforts, it has corresponded with those patent agents.
IGD has also given plaintiff Greater Texas Finishing Corporation an exclusive sub-license for the United States. Among its provisions, that sub-license agreement requires that if Greater Texas files a lawsuit against infringers of the patent, IGD is to undertake “its best efforts ... to give [Greater Texas] ... all reasonably requested assistance and information necessary to proceed with such suit for infringement.” (Exclusive License Agreement between IGD and Greater Texas Finishing Corporation at ¶ 8.3.)
This lawsuit, filed by both Golden Trade and Greater Texas, charges defendants with infringing the United States patent. In the course of exhaustive discovery, defendants sought production, inter alia, of communications between IGD and the patent agents whom it had retained to prosecute patent applications in numerous foreign countries, as well as the files retained by those foreign agents. Plaintiffs resist producing communications with patent agents in three of those countries. As for the requested files in the possession of the foreign patent agents, plaintiffs object principally on the basis of their assertion that these files are not in their possession or control, and possibly not in the possession or control of IGD.
ANALYSIS
A. Communications Between IGD and Foreign Patent Agents
Plaintiffs now withhold a small quantity of documents that involve correspondence between IGD and patent agents in Norway, Germany, and Israel. Before addressing each of these groups of documents, I briefly summarize the current state of the law.
Under Rule 501 of the Federal Rules of Evidence, we are required to look to federal law governing the invocation of an evidentiary privilege. See, e.g., United States v. Goldberger & Dubin, P.C.,
(1) where legal advice of any kind is sought (2) from a professional legal adviser in his capacity as such, (3) the communications relating to that purpose (4) made in confidence (5) by the client, (6) are at his instance permanently protected (7) from disclosure by himself or by the legal adviser, (8) except the protection be waived.
8 J. Wigmore, Evidence § 2292 at 554 (McNaughton rev. 1961), quoted in In re Grand Jury Subpoena Duces Tecum Dated September 15, 1983,
The central purpose of the privilege is “ ‘to encourage full and frank communication between attorneys and their clients.’ ” United States v. Zolin,
Consistent with these purposes, the attorney-client privilege is not limited to communications directly between the client and the attorney. Rather, if the purpose of the communication is to facilitate the rendering of legal services by the attorney, the privilege may also cover communications between the client and his attorney’s representative, between the client’s representative and the attorney, and between the attorney and his representative. See, e.g., Sup.Ct. 503(b), quoted in 2 Weinstein 6 Berger, supra, at 503-1;
protects only those disclosures that are necessary to obtain informed legal advice and that would not be made without the privilege ... [and that] [t]he privilege cannot stand in the face of countervailing law or strong public policy and should be strictly confined within the narrowest possible limits underlying its purpose.
United States v. Goldberger & Dubin, P.C.,
Application of these principles in the patent context has not always been simple or consistent, particularly in connection with the utilization of non-attorney patent agents. The most commonly encountered situation appears to involve the use of patent agents to assist in preparing and processing applications for United States and foreign patents on behalf of American entities. In some cases, the patent applicant deals directly with the patent agent, although more frequently such dealings are handled by the applicant’s attorneys.
Because the attorney-client privilege is premised on the existence of an attorney-client relationship, the status of communications with patent agents under federal law ordinarily requires an assessment of the patent agent’s relationship with the attorney and the client. If the patent agent is acting to assist an attorney to provide legal services, the communications with him by the attorney or the client should come within the ambit of the privilege. As summarized by Judge Weinstein:
Communications to an administrative practitioner or to a patent agent who is not a lawyer, though not in themselves privileged[,] should be protected if they were made in confidence at the direction of a lawyer who is employing the practitioner to assist him in the rendition of legal services. For instance, communications to patent agents will qualify, provided it can be shown that the responsibility for the work being done for the client rested with an attorney, and that the patent agent worked under his di*519 rection and performed tasks relevant to the client’s obtaining legal advice.
2 Weinstein & Berger, supra, II 503(a)(3)[01] at 503-26 to 27. This standard, although not unanimously endorsed, is supported by the better reasoned decisions on this issue, see, e.g., Willemijn Houdstermaatschaapij BV v. Apollo Computer, Inc.,
The more difficult question — and one crucial to the current motion — is whether an American court may ever apply foreign privilege law to determine whether communications with a patent agent should be protected and, if so, in what circumstances. This issue is significant because many foreign countries treat their patent agents as the functional equivalent of an attorney and recognize what amounts to an attorney-client privilege for his communications with his clients. See, e.g., Chubb Integrated Sys., Ltd. v. National Bank,
The issue arises, of course, only with respect to communications with foreign patent agents, but the circumstances of such communications can differ in significant ways. For example, the communication may be between an American client and a foreign patent agent concerning the prosecution of a United States patent or
In assessing the potential availability of foreign privilege law governing communications with patent agents, most courts have engaged in a form of traditional choice-of-law “contacts” analysis, see Wells Fargo Asia Ltd. v. Citibank, N.A.,
For the limited purpose of deciding the current motion, we need not address the many variations in fact patterns faced by these courts. In this case, according to the affidavits and privilege logs submitted by plaintiffs, the documents in question reflect communications between IGD, an Italian corporation and not a party to this lawsuit, and patent agents in Norway, Germany, and Israel who were assisting IGD in the prosecution of patents in their respective countries, and the communications concerned the processing of its patent applications in these three countries. Given this set of circumstances, it is apparent that the countries in which the patent agents represented IGD have the dominant interest in determining whether the com
In reaching this conclusion, I reiterate that federal law controls the determination of privilege issues under Rule 501. There is no reason, however, to read this rule as referring solely to substantive federal common law as distinguished from such choice-of-law rules as may otherwise be applicable. Nor is there any reason to read the rule as inflexibly precluding a federal court from looking to the substantive law of jurisdictions that, by virtue of the circumstances in which the disputed communication was made, have the most direct and compelling interest in whether those communications are to be publicly disclosed.
This process of referring to the law of the place where the allegedly privileged relationship was entered into is of course well recognized in cases in which, under Rule 501, the federal court is to look to state law governing privilege issues. See, e.g., Mitsui & Co. v. Puerto Rico Water Resources Auth.,
This approach is entirely consistent with the standards imposed by Rule 501 when federal law applies. The rule instructs that if the issue of law to which the disputed communication is relevant is an issue as to which federal law supplies the rule of decision, the privilege claim “shall be governed by the principles of the common law as they may be interpreted by the courts of the United States in the light of reason and experience.” Fed.R.Evid. 501. In adopting this broad language, “Congress manifested an affirmative intention not to freeze the law of privilege. Its purpose rather was to ‘provide the courts with the flexibility to develop rules of privilege on a case-by-case basis.’ ” Trammel v. United States,
Moreover, sensitivity to the interests of other jurisdictions is perhaps most compelling in the international arena. Indeed, the comments of the Second Circuit in addressing a related issue concerning compelled production of documents from abroad are instructive. In United States v. First National City Bank,
*521 [Ujnder the principles of international law, “A state having jurisdiction to prescribe or enforce a rule of law is not precluded from exercising its jurisdiction solely because such exercise requires a person to engage in conduct subjecting him to liability under the law of another
In this case, a balancing of the relevant interests leads me to conclude that the laws of Norway, Germany, and Israel should govern the confidentiality of communications between IGD and its Norwegian, German, and Israeli patent agents because these countries have the predominant interest in whether those communications should remain confidential, and enforcement of their laws in this case would not seriously impinge on any significant policy of this forum. As noted, the communications were between a non-party Italian corporation and foreign patent agents concerning the prosecution of foreign patents. These communications thus do not “touch base” with the United States.
As for American policy interests, the Federal Rules of Civil Procedure of course contemplate liberal discovery in American lawsuits, and the courts have generally recognized that claims of privilege are to be narrowly construed to minimize interference in the ability of the parties to have their claims and defense adjudicated on their merits. See, e.g., Doe v. Special Investigations Agency, Inc.,
It also bears emphasis that the evidentiary record in this case suggests that the foreign patent agents perform services akin to lawyers in their field of specialization. Thus, although most American courts have noted that United States patent agents are not attorneys and hence have held them not to come directly within the scope of the attorney-client privilege, the invocation of a comparable privilege for patent agents — whether domestic or foreign — would not be dramatically inconsistent with the rationale underlying the attorney-client privilege, and indeed I note that a number of United States courts have in fact offered such a protection not only
Having reached this conclusion, we must still address the evidentiary record to determine whether it sufficiently establishes the factual premise for plaintiffs’ privilege claims. In this regard, I note “that the burden is on a party claiming the protection of a privilege to establish those facts that are the essential elements of the privileged relationship.” von Bulow v. von Bulow,
In support of their privilege claim for the Norwegian documents, plaintiffs offer the affidavit of Per A. Martinsen, a registered Norwegian barrister. He reports that he participated in the prosecution of IGD’s Norwegian patent in cooperation with a patent agent employed by his law firm. He reports that his role “was to provide advice and instructions” to the agent “regarding the legal issues associated with prosecution.” (“Affidavit” of Per A. Martinsen, signed July 21,1992, at ¶ 5.)
As for the documents in question, Mr. Martinsen reports that communications to the firm from IGD were addressed to the firm itself and not to specific individuals. Communications from the firm were “meant to represent the advice of our firm, which include both patent agents and registered barristers.” (Id. at 11 6.)
This showing adequately establishes that the communications were covered by the attorney-client privilege in American terms and that we need not even resort to Norwegian law. If the patent agent was acting under the “instructions” as well as the advice of the barrister, then the communication, even if received or authored by the agent — as appears to be the case here— would be protected since she was serving to assist the attorney in providing legal services. Furthermore, under Norwegian law as elucidated by Mr. Martinsen, it appears that the communications would probably be protected since they were authored or received by a firm that includes registered barristers, one of whom apparently shared responsibility for prosecution of the patent in question.
As for the German documents, plaintiffs proffer two affidavits. In one, Dr. Peter Weinhold states that he is a German Patent Attorney and was responsible for prosecuting IGD’s German patent. (“Affidavit” of Dr. Peter Weinhold, signed July 21, 1992, at 111.) According to Dr. Weinhold, the title of “Patent Attorney” in Germany is the equivalent of a patent agent, and is attained on the basis of a “technical degree,” legal training as an apprentice to another patent agent, training at the Patent Office, and passage of an examination. (Id. at 112.)
In an accompanying affidavit, Paul Tauchner, also a German Patent Attorney, reports that patent attorneys may appear in court, but only with “an attorney at law.” (“Affidavit” of Paul Tauchner, sworn to July 21, 1992, at If 1.) Mr. Tauchner reports that German law promises confidentiality to communications between a Patent Attorney and his clients. (Id. at 112.) Accordingly, the German courts may not compel a Patent Attorney to disclose such communications and a party may not obtain copies of written communication by pretrial discovery. (See id. & annexed statutory translations).
Again, this unrebutted showing suffices to establish that the documents in question would be protected under German law. Since I conclude that such protection would not offend any serious policy interests of this jurisdiction and that the communications concern solely a foreign non-party client’s prosecution of a foreign patent, I conclude that the documents should be protected.
In support of their privilege claim with respect to the Israeli documents, plaintiffs proffer the affidavit of Neil J. Wilkof, an attorney licensed to practice in Israel and the United States. He reports that Israel statutory law protects the confidentiality of attorney-client communications, and that the Israeli courts have applied this privilege to protect communications between a client and a so-called “patent attorney” even though the patent attorney is licensed to practice only before the patent office. (See “Affidavit” of Neil J. Wilkof, Esq., signed July 21, 1992, at UU 2-3, 5.) According to Mr. Wilkof, this privilege protects against forced disclosure of written communications by or to patent attorneys in the course of discovery. (Id. at U 4.)
Once again, I find this showing — which defendants have not sought to rebut — adequate to establish that Israeli law would protect the documents at issue here. Since I conclude that application of this body of law is appropriate here, those documents too are protected from discovery in this proceeding.
B. The Files of IGD’s Patent Agents
As noted, defendants also seek production of the files of IGD’s patent agents
Under Rule 34(a), a party can be compelled to produce documents only if it has either possession of the documents or “control” of them, which is customarily interpreted as requiring that the party have “the legal right to obtain the documents requested on demand.” Searock v. Stripling,
In this case, defendants must establish, at a minimum, the ability of IGD to obtain the files of the patent agents, and plaintiffs’ practical ability or legal right to obtain those files from IGD.
More problematic is the entitlement or ability of IGD to obtain files from the patent agents. Analogizing to the relationship of clients and attorney in the United States, defendants argue that it may be presumed that IGD can obtain such files. Although not plainly established on the current record — defendants offer no evidence as to the relevant legal standards in any other country — such a prospect appears reasonable. Indeed, I note that plaintiffs have demonstrated, in the form of affidavits on this motion, that IGD’s patent agents are perfectly willing to cooperate in plaintiffs’ litigation of their claim in this forum. Moreover, I note that plaintiffs offer no meaningful response to defendants’ argument that IGD probably has the legal right to obtain the files of its patent agents.
In view of the record on this motion, plaintiffs may properly be directed to request IGD to obtain the relevant files from its patent agents for review by defendants in this case. See, e.g., Hercules Inc. v. Exxon Corp.,
CONCLUSION
For the reasons stated, defendants’ motion to compel is denied except that plaintiffs are directed promptly to request that IGD obtain for production to defendants the files of IGD’s patent agents reflecting the prosecution of foreign counterparts to the United States patent at issue in this case.
SO ORDERED.
Notes
. Plaintiffs originally resisted disclosure of similar documents involving communications with an Italian patent agent, but have since produced those documents, thus mooting the dispute. Although defendants urge us to address the question of the discoverability of the Italian documents despite their production, this court does not issue advisory opinions and there is no reason to spend any time on this closed issue.
. The Federal Standards of Evidence embody pre-existing case law and are looked to as reliable guides notwithstanding the decision of Congress not to include them in the Federal JRules of Evidence. See, e.g., Martin v. Valley Nat'l Bank of Arizona,
. As indicated, some courts have either explicitly or implicitly rejected this approach, although for differing reasons. For example, in Venitron Medical Prods. Inc. v. Baxter Lab., Inc.,
. The "Affidavits” of Per A. Martinsen, Dr. Peter Weinhold, Paul Tauchner and Neil J. Wilkof, Esq. were "[sjigned under the pains and penalties of perjury,” and thus do not strictly comply with 28 U.S.C. § 1746 (1988). This technical defect is insignificant and in any event has been corrected by plaintiffs.
. Under Fed.R.Civ.P. 44.1, although the parties may present evidence as to the substance of foreign law, the court may conduct its own research on foreign law, and its ruling on what foreign law requires is deemed a ruling of law. See 5 James Wm. Moore, et al., Moore's Federal Practice, 1f44.l.0l[2] at 44.1-3 to -4 (2d ed. 1992). Thus, it is not necessarily the case that the plaintiffs here bear a burden of proof on this issue, but even if they do, they have met it, particularly in the absence of any substantive response by defendants.
. The annexed translations are of section 203 of the Penal Code, section 24 of the Guidelines for the Practicing of the Patent Attorney Profession, section 53 of the Criminal Proceedings Code, section 383 of the Civil Proceedings Code, section 102 of the Revenue Regulations, section 84 of the Fiscal Court Code, and section 97 of the Criminal Proceedings Code.
. In the face of a denial by a party that it has possession, custody or control of documents, the discovering party must make an adequate showing to overcome this assertion. See generally 4A Moore et al., supra, ¶ 34.17 at 34-68 to 69 ("A party who denies under oath that the requested documents exist, or that they are within his custody or control, may not be compelled to produce them”).
. The contract in Anderson provided that the purchaser of certain real property must make its records available to the defendant-seller for use in the underlying personal injury action.
. Plaintiffs suggest, in passing, that it is unfair to force IGD — a non-party to this litigation — to undertake the assertedly burdensome task of collecting these files. The problems with this argument are two-fold — first, plaintiffs have not shown that this effort will in fact be unduly burdensome, and, second, IGD is, as noted, a potential beneficiary of any judgment for plaintiffs, and hence may fairly be expected to bear certain burdens in carrying out discovery.