As attorneys—whether in litigation or transactions—we tend to assume most of our work will be protected from disclosure in litigation, either as attorney–client privileged or work-product protected. But let this be a reminder: in most jurisdictions, such as Texas, work product is only protected if it is created in anticipation of litigation.
For transactional attorneys or even patent prosecutors, this requirement has practical consequences, as it generally means there is no work-product protection for their work, which is rarely created in anticipation of litigation. Wright and Miller recognize this, as they state “[a]s with all assertions of work-product protection, opinion work product is guarded against discovery only if prepared in anticipation of trial; mental impressions of an attorney in service to other objectives, such as negotiation of a transaction, are not protected by the doctrine.” 8 Charles Alan Wright et al., Federal Practice & Procedure § 2026 (3d ed. 2010) (emphasis added). See also, e.g.,Games2U, Inc. v. Game Truck Licensing, LLC, No. MC-13-00053-PHX-GMS, 2013 WL 4046655, at *5 (D. Ariz. Aug. 9, 2013) (“Courts have generally held that work performed by an attorney to prepare and prosecute a patent does not fall within the parameters of the work product protection since the prosecution of a patent is a non-adversarial, ex-parte proceeding.” (citations and alterations omitted)).
This nuance of the work product doctrine—the “anticipation of litigation” requirement—is something we probably all learned our first year of law school. But as we practice over the years, it is easy to forget it haphazardly. Instead, we merely focus on the fact that the work was performed by an attorney. Indeed, I have had this issue come up more than once in litigation; not only have I been reminded of the requirement, I have often had conversations with other litigators and been told something like: “John Doe is an attorney, so how is his work product not protected?” But often John Doe is an in-house attorney, for example, working on a transaction (not litigation), so his work product would not be protected.
Don’t be too alarmed, though, as not everything transactional attorneys or patent prosecutors do is subject to disclosure in litigation. There is still the attorney–client privilege. But the attorney–client privilege has its limitations, as it only covers “communications” between attorneys and clients. See Tex. R. Evid. 503 (stating that the privilege covers “confidential communications made for the purpose of facilitating the rendition of professional legal services”).
Moreover, some states, such as California, do not have an anticipation of litigation requirement for their work-product doctrine. See, e.g., Cnty. of L.A. v. Superior Court, 82 Cal. App. 4th 819, 833 (Cal. Ct. App. 2000) (“The protection afforded by the [attorney work product] privilege is not limited to writings created by a lawyer in anticipation of a lawsuit. It applies as well to writings prepared by an attorney while acting in a nonlitigation capacity.”). In California, therefore, it is easier for transactional attorneys’ work to be protected.
But in states like Texas, unless work product is created solely via communication with a client—and thus is attorney–client privileged—it is not necessarily protected. As a practice point for litigators, therefore, this means to watch for opposing parties that attempt to withhold work product created by transactional attorneys when there is no litigation anticipated. And don’t forget litigators working in a non-litigation context, as their work product is not protected for the same reasons. For transactional attorneys, it’s not so easy, as transactional attorneys cannot merely stop creating work product. Transactional attorneys should, however, be aware that their work product might not be protected in subsequent litigation. And that awareness is what this blog post was intended to create.