Under the law in Pennsylvania, unlike many other states, the attorney-client privilege used to be limited to only those things that the client communicated to the attorney.  Thus, while a client might describe his invention to the attorney, creating a privileged communication, the things that the attorney conveyed, such as the results of a patent search, or a sketch of an alternative form of the invention, were not considered to be privileged, and could be discovered by the opposing party in litigation.

In a February 23, 2011 decision in Gillard v. AIG Insurance, the Pennsylvania Supreme Court decided that communications from the attorney back to the client are also privileged.  The Court majority ruled that 42 Pa. C.S.A. § 5928 extends privilege to communications that are not “derivative” (that is, that do not incorporate communications from the client to the attorney).  This ruling overturned that in Nationwide Mutual Insurance v. Fleming, a 2007 case that ruled privilege was only one-way; from the client to the attorney.

The history of the attorney-client privilege is long, and the policy exists so that citizens may seek the advice of any attorney with full disclosure and candor, knowing that what is said to the attorney must be held in strict confidence.  In many instances in today’s world of electronic communication and record-keeping, the one-way privilege has shown itself to be full of holes, like a moth-eaten sweater.  Justice Saylor, writing for the majority, said, “We hold that, in Pennsylvania, the attorney-client privilege operates in two-way fashion to protect confidential client-to-attorney or attorney-to-client communications made for the purpose of obtaining or providing professional legal advice.”

There were two dissenting opinions in the case, and both justices argued that if a change in the privilege was warranted, then the legislature should change the law, rather than having the Supreme Court interpret the statute in this way.  In addition, Justice McCaffery (who used to run the court under the stands at Eagles games) argued that another privilege, the “work product privilege” already provided enough protection.  For litigation matters, Justice McCaffery may be right, but that privilege does not protect documents such as patent opinions that are important to inventors, so the new interpretation under the Gillard case is quite welcome.

— Lawrence A. Husick, Esq.