In the patent context, such information includes issued patents, pending applications, prosecution histories, related court documents, regulatory submissions e. Food and Drug Administration , publications and articles. As the evaluation progresses, the need for additional information increases. For example, to determine ownership, the buyer must review the seller's internal documents, such as employment contracts and joint development agreements or underlying employment agreements of consultants. Inevitably, an IP due diligence may require the examination of confidential or privileged information or both.
For example, when analyzing the buyer's freedom to operate under the acquired IP asset, seller's opinions of counsel and patent-counsel files may provide critical information. Sharing this information, however, raises the thorny issue of disclosing privileged information and potentially waiving attorney-client privilege. Naturally, the buyer will want as much information as possible to facilitate its decision making. On the other hand, the seller may remain hesitant to potential waiver of privilege, particularly in situations where the deal might fall through.
Thus, careful consideration is necessary before disclosing privileged information. No single answer provides a clear solution.
Competing interests will often arise requiring a separate discussion on how confidential information will be used, who will have access to it, and what will be done with the information upon completion of the due diligence. Regardless of the outcome, attention to preserving confidential information and perhaps more importantly the attorney-client privilege should always be at the forefront of any information disclosure. Conventional wisdom suggests that a seller of an asset would want to disclose as much information as necessary to attract an offer or to continue business discussions.
The existence of a confidentiality agreement may demonstrate to a court that the parties took seriously the risk of sharing of information. Metacritic Reviews. Authored by Esther H. Exercise of discretion Site supervision Privileged information Conflicts of interest Tendering How to handle privileged information [ Friendly print ] Implement proper access control Classify information into different security groups based on their risk exposure and degree of sensitivity. Another reasonable approach is sharing different levels of information as the negotiation reaches certain milestones. User Ratings. Competing interests will often arise requiring a separate discussion on how confidential information will be used, who will have access to it, and what will be done with the information upon completion of the due diligence.
In today's fast-paced market economy, there is considerable pressure to make a deal happen quickly, further prompting open and frank communications between parties. If the deal falls through, however, the consequences of sharing will take on great importance. Take, for example, a negotiation where a buyer is evaluating a patent portfolio and, during the due diligence, the seller shares an opinion of counsel on whether a party's product infringes a patent in the portfolio. Before such disclosure, the opinion is protected under attorney-client privilege.
If the parties part ways, and the patent becomes the subject of a suit, a third party may assert waiver of privilege and seek discovery of the opinion. Achieving the proper balance of disclosure, at the appropriate time, requires considerable forethought.
Blindly disclosing information with the hope that sharing will foster negotiations is short-sighted. On the other hand, protracting the time for disclosure or refusing to share may force an otherwise interested party to walk away from the deal. In addition to privileged information, there is a vast array of confidential information that might be sensitive.
For example, the buyer may seek information on products in the pipeline that are related to the IP of interest. The buyer may also seek information on market surveys and consumer data to determine how products are viewed by the general public or the best way to approach a new market. Sharing confidential strategic business information presents different risks than those posed by sharing privileged information.
In some sectors, confidential business information may be vitally more important than information related to litigation defenses or positions.
In either scenario, the challenge facing businesses is when and how to disclose and what level of access should be given. The attorney-client privilege protects confidential communications between an attorney and a client for the purpose of obtaining legal advice or services. The privilege shields from discovery advice given by the attorney to the client as well as communications from the client to the attorney.
Voluntary disclosure of privileged communications to a third party results in waiver of the attorney-client privilege unless an exception applies. For fairness reasons, the scope of the waiver extends beyond the document initially produced so that a party is prevented from disclosing communications that support its position while simultaneously concealing communications that do not. There is no clear cut guidance on the scope of the subject matter waived, but courts weigh the circumstances of the disclosure, the nature of the legal advice sought, and the prejudice to the parties of permitting or prohibiting further disclosures.
In addition to the attorney-client privilege, information may be protected by the work-product doctrine.
The work-product doctrine is broader than the attorney-client privilege and protects any documents prepared in anticipation of litigation by or for the attorney. The work-product doctrine seeks to allow an attorney the ability to "assemble information, sift what he considers to be the relevant from the irrelevant facts, prepare his legal theories and plan his strategy without undue and needless interference.
In contrast to the absolute protection afforded by the attorney-client privilege, the work-product doctrine recognizes a qualified evidentiary protection and may be overcome by a showing of substantial need. But like the attorney-client privilege, it may be waived.
A party waives the doctrine's protections as to all adversaries when it discloses privileged materials to an adversary and such disclosure does not further the doctrine's underlying goals. Waiving the attorney-client privilege and work-product doctrine could present significant risks.
Because waiver extends not only to communication but also to related material, confidential information that otherwise would never have been shared could become discoverable during litigation. This includes other legal opinions, product research, marketing research and other valuable business information. Waiving privilege or the work-product doctrine is potentially disastrous, but exceptions exist. Courts have identified circumstances involving due diligence where the benefit of sharing confidential communication and thereby upholding privilege outweighs the negative impact of waiver.
For example, as shown below, courts have upheld privilege where there is a common interest between the parties. The common-interest doctrine extends the attorney-client privilege to allow parties represented by different counsel to share information without waiving privilege. It applies generally when parties have a common legal interest, for example when they are co-defendants or are involved in or anticipate joint litigation.
Generally, the doctrine applies where there is a legitimate legal interest and should not apply where parties are merely involved in arms-length negotiations over the sale or license of an asset. Despite the potential of sharing information without waiving privilege, companies involved in a due diligence cannot assume that a court will find an exception to waiver.
This article was edited and reviewed by FindLaw Attorney Writers. There is a distinct moment when an attorney realizes that he or she just received documents that were not meant to be disclosed. During this brief initial period of realization, attorneys must quickly decide whether to listen to the angel or the devil whispering in their ear.
While jurisdictions differ on whether or not this type of disclosure is considered a waiver of attorney-client or work product privilege , the following steps should be followed if documents that you believe may be privileged are inadvertently sent to you. If this is done promptly after receipt of the documents, any foul play involving the matter can be diverted. However, the longer you wait to inform the other side and the further you read into the inadvertent disclosed document, the more likely sanctions will be levied upon you. Blowing past the stop sign preceding the path to the point of no return will most certainly raise sanction concerns.
Definition of privileged information: Alternative term for confidential information. privileged information meaning: secret information that is legally protected so that it does not have to be given to the public. Learn more.
There are avenues down this road that may allow you to, not only avoid sanctions, but also use the inadvertent disclosed document in your favor. According to Rule b of the Federal Rules of Evidence, when made in a federal proceeding, the disclosure does not operate as a waiver in a federal or state proceeding if: the disclosure is inadvertent; the holder of the privilege or protection took reasonable steps to prevent disclosure; and the holder promptly took reasonable steps to rectify the error. While not dispositive, the following multifactor test is commonly used in determining whether an inadvertent disclosure is a waiver.
Whether or not an inadvertent disclosure of privileged information constitutes a waiver varies amongst the courts.