Published in Landslide® magazine, Volume 10, Number 2 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2017 by the American Bar Association. Reproduced with permission. All rights reserved. This
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The doctrine of attorney-client privilege is one of the more
complicated and nuanced areas of an attorney’s practice.
As in-house counsel, privilege is even more compli-
cated because the client is not simply a person, but rather
a corporate entity with numerous people working to advance the
interest of the corporation. Additionally, the dual role of in-house
counsel as a trusted legal advisor and a business advisor and the
various different scenarios in which privilege can arise further
complicate the issue of attorney-client privilege for in-house coun-
sel. Because determining whether attorney-client privilege applies
is inherently a fact-sensitive analysis, this article aims to provide
an overview of the attorney-client privilege in general, specic
issues facing in-house counsel, and nally, some practical guid-
ance on how to address privilege issues in the corporate setting.
What Is the Attorney-Client Privilege?
The basis for the attorney-client privilege is the principle that cli-
ents and attorneys should be able to communicate in a free and
frank manner.1 The privilege belongs to the client and is a pro-
tection provided by various statutes and common law for certain
communications between the client and the client’s attorney to
encourage full disclosure of information between the client and
the attorney. It is important to note that in-house counsel for
large, multistate, and multinational corporations should be care-
ful when analyzing issues of attorney-client privilege because the
federal courts, each state, and each county have different rules.
Nevertheless, there are some rules that generally apply to most,
if not all, jurisdictions. For attorney-client privilege to apply to a
communication, the general rules require that: (1)the communica-
tion be between a client and an attorney (i.e., an individual having
a law degree and bar membership, and acting as an attorney for
the client) or an agent of an attorney (e.g., a tax accountant, a pat-
ent agent, a forensic investigator, a technical analyst, or an expert);
(2)the communication be made by the client and contain con-
dential information; (3)the communication be made outside
the presence of a nonprivileged third party; (4)the communica-
tion be made for the purpose of securing legal advice; and (5)the
privilege has not otherwise been waived.2 Privileged communica-
tions can be written or oral, but only communications between or
among “privileged” persons are protected.3
It should be noted that the attorney-client privilege and the
attorney work product doctrine—its close relative—can work
together to keep certain communications out of the reach of
opposing counsel during litigation. While this article will not
delve into the details of attorney work product doctrine, in-house
counsel should also consider whether the attorney work product
doctrine is appropriate for a particular situation if the in-house
counsel desires to keep certain communications condential.
What Is Not Protected under Privilege?
Attorneys and clients would be unwise to consider all com-
munications between the clients and attorneys as receiving
the privilege protection.
First, the underlying facts of a matter are always discover-
able. Privilege cannot (and should not) be used to protect facts
from being discovered. This principle has been routinely upheld
by courts to protect against clients and attorneys “privileging”
everything in order to obfuscate the truth. So, just because a fact
has been told to a lawyer does not give it privilege protection.
For example, if a corporation initiates an investigation into when
the rst public disclosure of an invention occurred, the factual
results of the investigation are not privileged, whereas the legal
advice by the lawyer on the impact of the investigation and rec-
ommended course of action might be privileged.
Second, client communications that do not involve a law-
yer (or a nonlawyer acting as an agent for a lawyer) are not
privileged, even if the communication originally came from
an attorney, is subsequently forwarded to an attorney for
advice, or concerns how to handle a legal situation.
Lastly, privilege cannot be used to facilitate or conceal a crime
or fraud, such as perjury and witness tampering.4 The crime-fraud
exception is something many clients already know about. In some
states, this exception extends to commissions of civil torts as well,
such as unlawful evictions or intentional iniction of emotional
harm.5 This exception can be applicable in situations where evi-
dence of crime or fraud is only present for the attorney or is only
present for the client (i.e., there is no evidence of improper motive
or conduct on behalf of one of the parties).6 It is also important to
note that, even in situations where an ethical client is communicat-
ing with an outside counsel or law rm, if the client is using the
communication to perpetuate a crime or fraud, those communica-
tions will likely be discoverable.7
When Does the Privilege Matter?
Attorney-client privilege is a pre-hoc protection measure used
in order to protect against production of sensitive documents
during discovery related to adversarial proceedings. While
discovery provisions are applied as broadly and liberally as
possible so that parties can unearth information relevant to
the subject matter of a dispute, parties can assert privilege to
render certain communications undiscoverable. Unprivileged
discovery documents can then be used as evidence during
depositions and at trial (if admissible) and could later be dis-
closed publicly, such as to the media, through court les.
In order to assert privilege in response to a discovery
request by the opposing party, the client’s attorney will produce
a list of documents that they consider protected under privi-
lege, called a “privilege log.” The opposing party can dispute
the privilege and demand discovery of those documents. If the
court agrees with the opposing party, the judge might conduct
an in camera review of the documents and, depending on the
situation, allow discovery of those documents.
In the rest of this article, we address the attorney-client privilege
for in-house counsel. Attorneys who work for a corporation play
Doug Gallagher is a registered patent attorney and a partner at the Indianapolis, Indiana, ofce of SmithAmundsen LLC. He has degrees in physics
and aerospace engineering and focuses his practice on intellectual property law. Prior to his law career, Doug was a ghter pilot and test pilot in the
US Navy. He can be reached at email@example.com. Manasi Raveendran is an attorney at IBM Corporation in New York, New York. She
focuses on cybersecurity issues, commercial and technology transactions, and regulatory compliance. She can be reached at firstname.lastname@example.org.