The work product doctrine is distinct from, and broader than, the attorney-client privilege.
Defendants, pharmaceuticals manufacturing companies, notified plaintiffs, patent holder and assignee, that they developed a new anti-depressant tablet. Defendants informed plaintiffs of their belief that their product did not infringe on plaintiffs' patent. Plaintiffs disputed defendants' claim and filed a patent infringement action. Defendants sought production of documents relating to the conception, reduction to practice, development and testing of plaintiff’s anti-depressant drug. Plaintiffs argued that certain requested documents were privileged from discovery as either work product or confidential attorney-client communications. Also the vast majority of the documents at issue in this matter involve communications with foreign patent agents.
Are the requested documents privileged in nature?
The court noted that plaintiffs had the burden to demonstrate that the materials at issue were privileged. With regards to communications with foreign patent agents, the court recognized the application of the attorney-client privilege if the foreign nation extended the privilege to communications with patent agents and the agents were more or less functioning as attorneys. The court held that documents that contained confidential legal advice were privileged, including technical documents used by attorneys to assess patentability. The court held that only those documents prepared in anticipation of litigation qualified as work product.