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Change is Coming: New Rules for TTAB Opposition and Cancellation Proceedings

January 10, 2017 – The TMCA

by Susan Progoff

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The United States Patent and Trademark Office recently issued final rules amending the Trademark Trial and Appeal Board Rules of Practice and raising fees for many transactions involving trademarks.  The new rules and fees will take effect on January 14, 2017, and will apply to all proceedings filed on or after that date and, to the extent practical, to all proceedings that are pending on that date.  A link to the new rules appears here, and a link to the new fees appears here. The new TTAB rules are intended to make proceedings in the Trademark Trial and Appeal Board more efficient and less costly, and formalize many of the Board’s current practices.

Electronic Communications

The new rules move TTAB practice toward paperless filing and docketing by strongly encouraging parties to file documents electronically through ESTTA, the Board’s electronic filing system.  The rules also encourage the parties to communicate with each other electronically by making e-mail the default system for service, and eliminate the practice of allowing parties extra time to respond to documents served by First Class Mail.  The parties may agree in writing to service by means other than e-mail, but because the response time will not change if they do so, the parties may also wish to agree to provide a courtesy copy by e-mail at the time a document is served.

In addition, all documents that are required to be filed with the Board must be filed electronically through ESTTA, with only a few limited exceptions.  If ESTTA is not operating when a document is due, in most, but not all, circumstances the filer may file the document by paper, along with a petition to the Director and the required $200 fee for the petition, requesting leave to file a paper version of the document.  This rule makes plain that there may now be a cost to waiting until the last minute to make a filing.

Commencing an Opposition or Cancellation

As under current practice, parties may obtain extensions of up to 180 days from publication to oppose an application.  A request to extend the time to oppose an application filed under Section 66 may be filed only electronically.  There are no exceptions to this rule.  It therefore is important not to wait until the last minute to request an extension if a Madrid application is involved.  An extension request for an application filed under Sections 1 or 44 should be filed electronically, but if ESTTA is down, the request may be made through a paper filing accompanied by a petition to the Director and the required fee.

The opposition period for all applications is the same as under current practice, i. e., 30 days from publication.  A party may request an initial extension of 30 days upon request, followed by a second request for a 60-day extension upon a showing of good cause, or one extension of 90 days upon a showing of good cause.  It will no longer be possible to request an initial extension of 60 days.  In addition, a party may request a final 60-day extension upon stipulation or with the consent of the applicant.  Beginning on January 14, 2017, there will be a fee of $100 for each electronically-filed extension request up to 120 days from publication, and $200 for a final 60-day extension.  The fees for filing these requests by paper will be $200 and $300, respectively.

The substance of a Notice of Opposition or Petition for Cancellation will not change from current practice, but there will be some important procedural differences.  First, oppositions against Madrid applications must be filed electronically.  There are no exceptions.  Oppositions against applications filed under Sections 1 or 44 and Petitions for Cancellation should be filed electronically, but if ESTTA is down the Notice of Opposition or Petition for Cancellation may be filed by paper accompanied by a petition to the Director and the applicable fee.  If a Notice of Opposition is being filed at the opposition deadline, or a Petition for Cancellation includes any claims based on grounds that are time-sensitive, the notice or petition may need to be filed using the Priority Mail Express procedure set forth in Trademark Rules 2.195-2.198 if ESTTA is down.

In addition, in an opposition against a Madrid application, the cover sheet to the Notice of Opposition will control the grounds and goods or services that are the subject of the opposition.  Once the opposition deadline has passed, the opposer cannot add additional grounds or goods/services to an opposition against a Madrid application.  Thus, it is crucial to confirm that all goods or services that will be the subject of an opposition against a Madrid application and all grounds for such an opposition are listed in the cover sheet before the time to oppose closes.

Finally, the Board will be reinstituting its pre-2007 practice of serving the Notice of Opposition or Petition for Cancellation.  When a Notice of Opposition or Petition for Cancellation is in proper form, the Board will send an e-mailed notice of institution identifying the proceeding and containing a link to the electronic proceeding record to the opposer or its counsel and to the applicant or its attorney in an opposition, or in a cancellation, to the petitioner or its counsel and to the record owner of the registration that is the subject of the proceeding or its domestic representative, and, if the petitioner identifies an owner who is not the record owner, notice will also be sent to the alleged owner.  A petition for cancellation must indicate, to the best of the petitioner’s knowledge, the name, address and current e-mail address of the current owner of the registration.  Because of these new procedures, it is important that the owner of a registration keep its contact information current in the PTO’s registration files.

Discovery

Under the new rules, discovery will be more limited and streamlined than under current practice.  The new rules also afford the parties more flexibility to tailor discovery to the specific needs of their case by, for example, limiting its scope, shortening the response times or agreeing to reciprocal disclosures instead of formal discovery requests.  Also, unlike practice under the present rules, requests must be served early enough in the discovery period that responses will be due before discovery closes.  This means that a party will no longer be able to wait until discovery is about to close to serve its requests.

The scope of discovery will also be more limited.  The new rules expressly incorporate the doctrine of proportionality, which is also made explicit in the revised version of the Federal Rules of Civil Procedure that took effect in December 2015, and has been a hallmark of the Board’s decisions concerning discovery for many years.  In addition, the number of document requests and requests for admission each will be limited to 75, including all subparts.  As with the current practice with respect to interrogatories, a party who believes that it has been served with more than the allowed number of requests may respond by interposing a general objection, after which the propounding party may re-serve the discovery in amended form to comply with the limits imposed by the rules.  A party may move to increase the discovery limits for good cause.  Comments to the rules suggest that good cause may be found when the opposing party is a foreign entity that is not subject to a deposition in the U.S., or when the opposition involves multiple parties or an extensive list of goods or services.  There is one exception to the 75 request limit for requests for admission to allow each party to serve one comprehensive request to authenticate documents that the opposing party produced in discovery.  Such a request must identify the specific documents to which the request applies, and the responding party must admit which specific documents are authentic, and identify any that are not.

In general, a discovery deposition of a witness residing in a foreign country must be taken by written interrogatories unless the Board, upon motion for good cause, orders that the deposition be taken orally or the parties so stipulate.  If an officer, director, managing agent or other witness of a foreign party will be present in the United States during the discovery period, that person may be deposed orally while in the U.S.  There is no obligation on a foreign party to disclose if or when its witnesses will be traveling to the U.S. during the discovery period.  It would be advisable, therefore, to include an interrogatory to a non-U.S. adverse party to request this information specifically if an oral deposition is of interest.

There also were changes to Trademark Rule 2.120(f), which governs motions to compel discovery.  As with current practice, the parties must meet and confer in an attempt to resolve the issues before such a motion may be filed.  The amendments to the rules, however, have imposed new time limits on when a motion to compel may be brought.  A motion to compel a party to serve initial disclosures must be brought within 30 days of when the disclosures were due, or the motion is waived.  A motion to compel involving any other type of discovery request must be made promptly, and in no event may be brought after the first pre-trial disclosures are due.

The changes to the discovery rules will require parties to focus on the information that is most relevant to their cases, and should discourage broad, sweeping requests that amount to a fishing expedition.  These changes will also benefit parties who start discovery early in the discovery period, and who are prompt in raising any discovery disputes.

Trial

Probably the modifications that have received the most attention are the changes to the manner in which evidence may be submitted during a party’s testimony period.  Under current practice, parties typically present evidence through oral testimony of one or more witnesses at a testimonial deposition, which is subject to the Federal Rules of Evidence.  As at a trial in a court, the opposing party or its attorney may make objections to testimony or exhibits marked at the deposition, and may cross-examine the witness.  Testimonial evidence may also be presented in other formats, such as through an affidavit or declaration, but only if the parties agree to that procedure.

This will change under the new rules, which will allow a party to decide unilaterally whether it wishes to present its direct testimony through an oral deposition or whether it prefers to do so through an affidavit or declaration, which can be considerably less expensive and time-consuming.  Under the new Rule 2.123, a party may submit its direct testimony through an affidavit or declaration, which must comply with the Federal Rules of Evidence.  When a party elects to present a witness’s direct testimony in writing, however, the proffering party must make the witness available for cross-examination, which can be done orally if the witness is in the United States, or through written interrogatories if the witness is in a foreign country.  A party electing to cross-examine an opposing party’s witness must bear the expense of the cross-examination, which will consist primarily of paying for the court reporter and copies of the transcripts.  The proffering party will be responsible for the cost of producing the witness.  A notice to cross-examine a declarant or affiant must be served within twenty days of service of the affidavit or declaration, and must be filed with the Board.  The deposition must be completed within thirty days of the date of the notice.

The new rules also specify the procedure for taking testimony from witnesses who are not located in the United States.  Generally, testimony of a non-U.S. witness must be taken through written interrogatories.  Accordingly, if a foreign witness submits a declaration in a TTAB proceeding, the cross-examination must be conducted through written interrogatories.  The new rules, however, provide that if the non-proffering party serves a notice of taking testimonial deposition by written questions of a witness who will be in the United States at the time the deposition will be taken, the party seeking the deposition may, within twenty days of service of the notice, file a motion on good cause to have the deposition taken orally.

In addition to submitting trial evidence by testimony or affidavit/declaration, as in the past a party may submit certain types of evidence, such as printouts of registrations, printed publications, internet materials and the like, through a Notice of Reliance.  The rules have clarified, but not changed, certain aspects of the requirements for evidence that may be submitted through a Notice of Reliance.

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CMS would have discretion to deny hospice applications if the hospice’s medical director or administrator serves “multiple other hospices” or practices/is located “at such a distance (for example, in a different state) from the enrolling hospice that the medical director cannot realistically perform all medical director functions,” with a similar provision for administrators. In addition, CMS proposes applications denied for “other program termination or suspension,” may be applied to the provider or supplier in its own name or NPI or that of its owners, managing employees, or managing organization regardless of whether any appeals are pending. Retroactive Revocation CMS proposed to restructure and expand the regulatory grounds for retroactive revocation of billing privileges. Currently, Medicare regulations provide that revocations are, by default, prospective in nature: effective 30 days after CMS or the CMS contractor mails notice to the provider. Under certain circumstances, the regulations provide for revocations to be retroactive, such as when a provider is convicted of a felony, the date a professional license is suspended, revoked, or surrendered, or when a provider submits a false certification in their enrollment application. CMS has proposed to reframe the rule so as to default to retroactive revocation of billing privileges. CMS expressed concern that providers may collect payment from Medicare while remaining so non-compliant with enrollment requirements as to merit revocation. To address this concern, CMS proposed that all revocations be retroactive to the date of determined non-compliance.[1] As a result, providers suspected of misconduct or non-compliance are likely to face claims of retroactive overpayments in addition to the immediate concern no longer receiving Medicare payments while their enrollment is revoked. Reapplication Bar CMS’s proposed rule expands the grounds from which a provider may be prohibited from seeking reapplication as a Medicare provider. Under current regulations, CMS may prohibit prospective providers from enrolling in Medicare for up to 10 years if its enrollment application is denied because the applicant submitted false or misleading information in its application. Under the proposed rule, CMS will have the discretion to prohibit a provider from enrolling in Medicare if their enrollment application is denied for any reason. Conclusion As a part of the federal government’s increasingly aggressive push to combat real or perceived healthcare fraud, the proposed rule both broadens CMS’s authority to revoke and deny Medicare enrollment and raises the stakes for revocation and denial. What the proposed rule does not share is how CMS plans to exercise this expanded discretion: as a result, the proposed rule, if enacted, increases the unpredictability and potential ramifications of even technical noncompliance with CMS rules. As a result, Medicare providers should keep a close eye on potential revisions to these rules and their potential implementation and consider proactively evaluating their compliance under CMS standards. [1] In the proposed rule, CMS identifies, with respect to each ground for revocation, what it will consider to be the effective date of revocation.

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Alaska HB 126: What Changes for Alaska Native Corporations, Proxy Filings, and Annual Reports

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What HB 126 Changes The old rule Under prior law (Alaska Statutes Sec. 45.55.139), an Alaska Native Corporation had to file its annual report, proxies, and proxy statements with the Alaska Division of Banking and Securities (the Division) if it had more than $1 million in assets and 500 or more shareholders on its current rolls. A filing ANC was also required to follow the Division’s proxy rules (3 AAC 08.305 through .365), which require specific disclosures such as top 5 executive compensation, and related-party transactions. Because these filings are treated as public records, they gave non-shareholders, including the public and the press, visibility into ANC financial information that is not filed with the SEC. The new rule HB 126 changes how the 500-shareholder test is measured. Now, the asset test is removed, and the shareholder count is based on how many shareholders the corporation originally enrolled when it was formed under the Alaska Native Claims Settlement Act (ANCSA), not how many it has today. As shares have passed down through families over the decades, some Village Corporations that started with fewer than 500 shareholders now have more than 500 recordholders. Under the old current-count test, when those corporations had crossed the threshold, they had to file. Under the new original-enrollment test, they do not. Who is affected Village Corporations that originally enrolled fewer than 500 shareholders are the main beneficiaries. They no longer have to file proxy and annual report materials with the Division or follow the Division’s proxy regulations at 3 AAC 08.305 through .365. Two groups must continue to file as before: all twelve ANCSA Regional Corporations, each of which enrolled more than 500 shareholders at creation, and all Village Corporations that originally enrolled 500 or more shareholders. As reported by the Alaska Beacon, when the bill was under consideration, the Division identified 59 corporations then filing, expected at least seven village corporations to become exempt, and was reviewing roughly 30 more. 2. Practical Analysis HB 126 reduces a real compliance burden for smaller Village Corporations, which now need not spend time and money on State filings. In coming years, the exempt Village Corporations may experience benefits associated with less public disclosure and less regulation. But at the same time, less public disclosure carries trade-offs. Benchmarking will become harder Publicly-filed proxy statements and annual reports have long served as a reference set. Shareholders, corporations, advisors, and counsel use them to compare governance practices, compensation, and financial results across similarly-situated ANCs. Since fewer of these materials will be filed publicly, there will be fewer comparable documents available, which will make benchmarking and market-checking more difficult for like-sized ANCs over time. Executive compensation transparency may be reduced The Division’s proxy rules require disclosure of the compensation of ANC’s top five most highly compensated individuals (3 AAC 08.345(b)(2)), related-party transactions above $20,000 (3 AAC 08.345(b)(3)), and audited financial statements and management’s discussion and analysis (3 AAC 08.365). When a corporation is no longer required to file these disclosures publicly, it becomes harder for shareholders and others to obtain the information, to understand how compensation is set for their corporate leadership, and how it compares across corporations of similar size and complexity. 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Sec. 1625(c), which requires a Native Corporation that would otherwise be subject to the Securities Exchange Act of 1934 to prepare and transmit to its shareholders an annual report containing substantially the information a company subject to that Act would include. Similarly, ANCs that solicit proxies for an annual meeting are still required to furnish shareholders with those proxy materials under general Alaska corporate law. However, ANCs are now no longer required to transmit proxy statements to the State. ANCs’ reporting obligations to their shareholders are unaffected by HB 126. Any corporation newly exempt from state filing still owes its shareholders a detailed annual report and a proxy statement, even though that report is no longer routed through the State and made public. Reinstatement of dissolved Village Corporations Separately, HB 126 amends AS 10.06.960(k) to remove the prior deadline (previously December 31, 2020) for reinstating an involuntarily dissolved Native Village Corporation. A dissolved Village Corporation may now apply to be reinstated under AS 10.06.633(e) at any time. Reinstatement still runs through the commissioner under AS 10.06.633(e). In general, that means the ANC must apply, cure the neglect or delinquency that led to dissolution, and pay the amounts owed, and the corporation’s name must be available or be changed to one that is. Once reinstated, the corporation and its shareholders are restored to the rights, privileges, liabilities, and obligations they would have had as if the dissolution had never occurred, and corporate and shareholder actions taken during the dissolution are treated as valid. If the previously-used corporate name is no longer available, the board alone may amend the articles to adopt a new name (without the necessity for shareholder approval). 3. Frequently Asked Questions What does HB 126 do? It changes how Alaska measures the 500-shareholder test that decides which ANCs must file proxy and annual report materials with the state. It removes the asset test, and it counts shareholders based on original enrollment rather than the current rolls. It also removes the deadline for reinstating an involuntarily dissolved Native Village Corporation. Which ANCs are affected? Village Corporations that originally enrolled fewer than 500 shareholders, because they may no longer need to file with the Division. Regional Corporations and Village Corporations that originally enrolled 500 or more shareholders must continue to file as before. Does HB 126 eliminate all reporting obligations? No. It changes the state filing requirement under AS 45.55.139, but it does not remove the separate ANCSA obligation (43 U.S.C. Sec. 1625(c)) to provide shareholders with an annual report, and general corporate law still calls for a proxy statement when the ANC solicits proxies. Corporations that remain subject to state filing requirements must also continue to comply with the Division's rules. We think we are now exempt. What should our ANC board and management consider? Confirm your ANC’s original enrollment number and whether your corporation falls below the new threshold. Watch for communications from the State on this topic as they proceed with their research. If your ANC is now exempt, decide how your corporation will meet its continuing ANCSA obligation to shareholders, review proxy and annual meeting materials and timelines, and consider what to communicate to shareholders about any change in how they will receive information. It is worth documenting the basis for any exemption. What should ANC shareholders watch for? Shareholders should watch for how and when they will continue to receive annual report and proxy statement information directly from their ANC, since some material that used to be available through the State’s online website will no longer be publicly filed. If something is unclear, shareholders can ask their ANC how it intends to meet its ANCSA reporting obligations. How Dorsey Can Help HB 126 lightens the State filing load for smaller Village Corporations, but it also raises practical questions: confirming who is exempt, meeting continuing ANCSA obligations to shareholders, keeping proxy and annual meeting processes on track, and maintaining benchmarking when public materials become less available. These are exactly the kinds of judgment calls that benefit from early planning. Dorsey’s attorneys work closely with Alaska Native Corporations and related stakeholders. If you have questions about HB 126, ANC governance, proxy filings, annual reports, disclosure obligations, or shareholder communications, please contact your Dorsey attorney, including the authors of this eUpdate.

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In Uber London Ltd & Ors v Garry White & Ors; Mishcon de Reya LLP [2026] EWHC 1610 (Comm), the Commercial Court held that documents created to help a funder decide whether to invest in a claim will not ordinarily attract litigation privilege. This means that information a firm gathers while acting for a funder can later fall within the control of the claimants it goes on to represent in the same matter. Background The Claimants (a claim group of over 10,000 individual London black cab drivers and the assignee of two former minicab operators) alleged that the Defendants (three companies in the Uber group) obtained and retained their private hire operator's licence through an unlawful means conspiracy alleged to involve fraud. Because the claims were issued outside the ordinary six-year limitation period, the Claimants relied on section 32 of the Limitation Act 1980, contending they could not, with reasonable diligence, have discovered the fraud before June 2018. A preliminary issue trial was listed to determine the question of whether the Claimants discovered, or could have discovered with reasonable diligence, the alleged fraud and/or deliberate concealment only after June 2018. The Claimants were represented by Mishcon de Reya ("MdR"). However, before MdR’s engagement with the individual drivers had begun, in late 2017 it was engaged by the litigation funder Harbour to investigate the merits and value of the potential claim. During that stage, MdR corresponded extensively with Harbour and with the Licensed Taxi Drivers' Association ("LTDA"), a black cab drivers' trade association. MdR was not formally engaged by the Claimants until October 2018 onwards. Once the proceedings had started, the Defendants sought disclosure of communications exchanged between MdR and Harbour before the engagement of MdR by the Claimants (the "Harbour Communications"). This included correspondence between MdR and Harbour, communications with the LTDA, and documents held on MdR's file opened in Harbour's name in connection with the potential claim. The Claimants resisted disclosure on four grounds: (i) that the documents were not relevant; (ii) on the grounds of litigation privilege; (iii) that the documents were outside their control; and (iv) that disclosure occurring so close to trial would be disproportionate. Judgment (i) Were the Harbour Communications relevant to the preliminary issue? The Court held that the Harbour Communications were likely to contain relevant material, on two bases. First, where the Claimants or the LTDA had communicated directly with MdR, that material could shed light on individual Claimants' actual knowledge of the alleged facts. Secondly, what MdR and Harbour had discovered during their investigation could inform the question of what a Claimant could reasonably have discovered at the time (even though the Defendants accepted that MdR's knowledge could not simply be imputed to the Claimants). (ii) Were the Harbour Communications protected by litigation privilege? As set out in the classic cases of Three Rivers (No. 6) [2005] 1 AC 610 and WH Holding Ltd v E20 Stadium LLP [2018] EWCA Civ 2652, communications between parties or their solicitors and third parties for the purpose of obtaining information or advice in connection with existing or contemplated litigation are privileged when the following conditions are satisfied: Litigation must be in progress or in reasonable contemplation. The communications must have been made for the sole or dominant purpose of conducting litigation. The litigation must be adversarial, not investigative or inquisitorial. The Court rejected the Claimant’s claim to be able to withhold the Harbour Communications on the basis of litigation privilege. The Court confirmed that litigation privilege protects only communications created for the dominant purpose of conducting litigation. The Court found that Harbour had instructed MdR so that Harbour could decide whether to fund the proceedings. As such, the dominant purpose of the communications was in relation to funding, not the conduct of litigation. This was distinguished from the situation where an individual litigant who takes its own funding decision. In that situation, the decision whether to fund and the decision whether to litigate are one and the same, made by the person who will actually be the claimant, and so it forms a part of that person's conduct of their own litigation. In contrast, a third-party funder's commercial decision whether to fund someone else's claim is not necessarily part of conducting that litigation. The fact that litigation privilege can, in principle, be claimed by a non-party funder (as recognised in the case of Al Sadeq v Dechert [2024] EWCA 28) did not assist Harbour, since there was no evidence it intended to play any role in the litigation itself beyond funding it. Communications between Harbour and MdR did remain capable of attracting another kind of privilege: legal advice privilege, because of the solicitor-client relationship between Harbour and MdR. But communications with third parties such as the LTDA were not automatically protected in the same way. (iii) Were the Harbour Communications within the Claimants' control? The Court also rejected the argument that the Harbour Communications sat outside the Claimants' control because they belonged to Harbour and not the Claimants. The Court’s reasoning was that once the individual Claimant drivers became MdR's clients, MdR also owed them a duty to disclose material information. That included information that MdR had originally acquired while acting for Harbour. As held in the case of Hilton v Barker Booth & Eastwood (a firm) [2005] 1 WLR 567, a solicitor owing duties to two clients cannot simply prefer one over the other, and it was unrealistic to suppose MdR would investigate the same claims for Harbour, then represent the Claimants, while disregarding everything it had already learned. The obvious commercial expectation was that this earlier work would be used to advance the Claimants' case. MdR sought to rely on a confidentiality clause in a 2024 retainer agreement between it and RGL Management Ltd (a claims management company acting on behalf of the Claimants) to argue that it was relieved of any duty to disclose information obtained while acting for other clients. The provision stated that MdR may "have acted for persons in the same or similar sector as yours and by agreeing to the terms of this letter you agree that will have no duty to disclose to you any confidential information that we have obtained, or might in the future obtain, from acting for such persons or which is derived from any other source". The Court rejected this on several grounds. Claimants who had already become MdR's clients had an existing right to information in the Harbour Communications where it was relevant to their claims before the 2024 retainer agreement. If they were to surrender that right, it would have required their informed consent (also required under the SRA Code of Conduct). The Court found no evidence that such informed consent had been given. The terms had simply been made available to the Claimants through a portal, with no indication that Claimants understood they were giving up existing rights to relevant information. The Court found that even if the terms had been contractually binding, that would not have amounted to informed consent. In addition, the wording of the clause was not sufficiently clear to show that the Claimants had agreed to waive access to this information. (iv) Was disclosure reasonable, proportionate, and necessary at this stage? The Claimants argued that it was neither reasonable nor proportionate for disclosure to be given at such a late stage (approximately two weeks before the start of the preliminary issue trial) and that it was not necessary for the just disposal of the proceedings. The Court rejected this, but it drew a distinction between two categories of documents within the Harbour Communications: Documents bearing on the actual knowledge of the individual drivers, including communications with the LTDA, were not privileged, likely straightforward to review, and directly relevant to the preliminary issue. Their disclosure was ordered as reasonable, proportionate, and necessary. Documents reflecting only MdR's or Harbour's own assessment of the merits were of more marginal, indirect relevance and largely likely to fall under legal advice privilege. A review to isolate the smaller pool of non-privileged material in this category would be time-consuming for limited benefit, so this was excluded from the order. Key Points to Note The judgment is an important reminder of several practical points: However closely a funder is involved in evaluating a claim's merits, litigation privilege will only apply to communications where the sole or dominant purpose of the communication is the conduct of litigation, not the funder's own decision on whether to finance it. Unless that communication separately attracts legal advice privilege, it may need to be disclosed. The same considerations apply to other communications. For example, in RBS Rights Litigation [2017] 1 WLR 3539 the argument that an After the Event (ATE) policy was subject to litigation privilege was rejected on a similar basis. Whilst in this case, there was no dispute as to whether litigation was in contemplation, it is important to note that litigation privilege will not automatically apply to the investigative stages of a claim, i.e. before litigation is in contemplation. Even where litigation is reasonably contemplated, the dominant purpose test must still be satisfied. Material created primarily for fact-finding, risk assessment, or other investigative purposes will not attract litigation privilege unless those activities are actually undertaken for the dominant purpose of conducting the litigation. (See The Director of the Serious Fraud Office v Eurasian Natural Resources Corporation Ltd [2017] EWHC 1017 (QB)). When engaging a law firm, clients should ensure that they understand whether the firm has previously obtained information about their claim while acting for another party (for example, a funder or another interested party) and how that information will be handled. Any restrictions on the firm’s ability to share relevant information with the client should be explained clearly at the outset, including what information may be withheld and why. If this decision raises questions about your own funding arrangements, disclosure strategy, or privilege position, please get in touch with our Commercial Litigation team.