Client Attorney Privilege

Closed Meeting between CIPA and JPAASeptember 28, 2010

Koji Hirayama

JPAAInternational Activities Center

Client–Attorney Privilege

http://www.cipa.org.uk/pages/home

http://www.jpaa.or.jp/

2Closed Meeting between CIPA and JPAA

• What is Client-Attorney Privilege?• Is CAP extended to Foreign Agent/Attorney?• Is CAP extended to Japanese Patent Attorney?

• Cases involving Japanese Patent Attorney• How to Satisfy Burden of Establishing CAP • Short Summary

• International Activities on CAP• WIPO SCP• Possible Approaches to Resolution

• Conclusive Message

Contents


What is Client-Attorney Privilege?

• Testimonial privilege allowing clients to refuse to disclose confidential communication with attorneys

• Policy Goal

– The attorney-client privilege functions “to encourage full and frank communication between attorneys and their clients.”

United States v. Zolin, 491 U.S. 554, 562 (1989).

– The attorney-client privilege “exists to protect not only the giving of professional advice to those who can act on it but also the giving of information to the lawyer to enable him to give sound and informed advice.”

Upjohn Co. v. United States, 449 U.S. 383, 390 (1981).

What is Client-Attorney Privilege? (cont’d)


• Mostly discussed in U.S. litigations– Among “common law” discovery countries such as United Kingdom,

Canada, Australia, India, Malaysia, Singapore

• Why?– Exceptionally broad discovery allowed– Only the jurisdiction where “unenforceability” defense based on

“inequitable conduct” is provided– Breach of “duty of candor” toward U.S. PTO constitutes inequitable

conduct– Duty of candor is violated when intentional concealment of material

facts is found– Information Disclosure Statement (“IDS”)

• No statutory rule/binding case law governing U.S.!

• Among district courts, “principles of commity”• Choice-of-law “contacts” analysis

– If a communication involves a U.S. patent application, U.S. privilege law applies.

– Communications with a foreign patent agent are not privileged, unless the foreign agent is acting under the control of a U.S. attorney.

– If a communication involves a foreign patent application, as a matter of commity, the law of that foreign country is considered as to whether that law provides a privilege comparable to CAP.

Is CAP extended to Foreign Agent/Attorney?


http://www.openclipart.org/people/neocreo/neocreo_Blue_World_Map.svg

• In Japan, is there “a privilege comparable to CAP in U.S.”?

• No “common law” discovery system• No “common law” CAP• But, so-called “professional secrecy obligation” under civil

law system

• Amendments to Code of Civil Procedure (“Code”) in 1998

Is CAP extended to Japanese Patent Attorney?


• Article 220 was introduced.

• Obligation to Submit Document (Article 220(4)(c))– The holder of the document may refuse to submit a document

stating the fact prescribed in Article 197(1)(ii), which is not released from the duty of secrecy.

• Right to Refuse to Testify (Article 197(1)(ii))– A patent attorney (a doctor, dentist, attorney at law (including a

registered foreign lawyer) …) may refuse to testify with regard to any fact which he has learnt in the course of his duties and which should be kept secret.

Amendments to the Code in 1998


• Before 1998 Amendments• Privilege to Japanese patent attorney denied

– Alpex Computer Corp. v. Nintendo Co., 1992 U.S. Dist. LEXIS 3129 (S.D. N.Y. 1992)

– Santrade Ltd. v. General Elec. Co., 150 F.R.D. 539 (E.D. NC. 1993)

• After 1998 Amendments• Privilege to Japanese patent attorney recognized

– VLT Corp. v. Unitrode Corp., 194 F.R.D. 8 (D. Mass. 2000)– Knoll Pharms. Co. v. Teva Pharms. USA, Inc., 2004 U.S. Dist. LEXIS 24057 (N.D.

Ill. 2004)– Murata Mfg., Co. v. Bel Fuse Inc., 2005 U.S. Dist. LEXIS 37774 (N.D. Ill. 2005)– Eisai Ltd. v. Dr. Reddy’s Labs., Inc., 406 F.Supp.2d 341 (S.D. N.Y. 2005)

Cases involving Japanese Patent Attorney


9

Cases involving Japanese Patent Attorney (cont’d)

Closed Meeting between CIPA and JPAA

• Eisai Ltd. v. Dr. Reddy’s Labs., Inc., 406 F.Supp.2d 341 (S.D. N.Y. 2005)– ANDA litigation testing validity and enforceability of a patent– Defendant alleged that Plaintiff engaged in inequitable conduct before

U.S. PTO

– After amendments to the Code in 1998– Japanese law accords protection similar to CAP– U.S. court respected Japanese privilege

• CAP issue resolved?• Still no statutory rule/binding case law• How to satisfy the burden of persuasion in asserting CAP?

– The burden rests on the party claiming the application of privilege.

http://en.wikipedia.org/wiki/File:Aciphex-sample-bottle.jpg

• In re Rivastigmine Patent Litig., 237 F.R.D. 69 (S.D. N.Y. 2006)– ANDA litigation testing validity and enforceability of a patent– “Rivastigmine” tartrate is the active ingredient in “Exelon,” a

medication for Alzheimer’s type dementia.– Defendant (Dr. Reddy’s Labs.) sought to compel production of

Plaintiff’s communications concerning corresponding foreign patent prosecution.

– Plaintiff (Novartis) alleged that such communications are privileged.

– After amendments to the Code in 1998– Same judicial district as that of Eisai case

How to Satisfy Burden of Establishing CAP


http://en.wikipedia.org/wiki/File:Rivastigmine_Structural_Formulae.png

Requirements for Establishing CAP

• “Privilege log” must be provided which describes the nature of the documents with enough detail to “enable other parties to assess the applicability of the privilege.” FRCP Rule 26(b)(5).

• The following information must be provided:– (i) the type of the document, e.g., letter or memorandum;– (ii) the general subject matter of the document;– (iii) the date of the document; and– (iv) such other information as is sufficient to identify the document

for “a subpoena duces tecum (an order to produce documents).”Local Civil Rule 26.2.


Issues in Rivastigmine

• Is CAP applied to P’s communications with foreign patent agents and/or law firms (in 37 countries)?

• Did P describe the nature of the documents with enough detail to “enable D to assess the applicability of CAP”?


NO. (for 30 countries)YES. (for 11 countries)

NO.

Applicability of CAP in Rivastigmine

• CAP not applied (though not denied – sanctioned):• Australia, Austria, Belgium, Botswana, Brazil (log #44), Cyprus, Denmark,

Greece (log #14), Finland, France, Hong Kong*1, Hungary*2, Ireland, Israel, Japan, Italy, Luxemburg*3, Malaysia, The Netherlands, New Zealand (log #63), Pakistan, Philippines (log #66), Poland, Portugal, Romania (log #29), South Africa, South Korea, Spain, Sweden, Taiwan.

*1 No legal advice was sought or given.

*2 No evidence was submitted to show that a secrecy obligation under Hungarian law imply an evidentiary privilege.

*3 CAP denied.

• CAP applied:• Brazil (log #5), Czech, Germany, Greece (log #53), New Zealand (log #24),

Philippines (log #26), Romania (log #69), Singapore, Slovakia, Republic of Trinidad and Tobago, United Kingdom.


Categorical Log v. Itemized Log

• P submitted “a categorical log" in which a subset of documents was classified by a category, instead of providing a traditional “itemized log.”

– Categorical logs 1 and 40 refer to confidential communications between clients and “Australian patent agents and/or Australian law firms,” concerning “patent prosecution for Australian equivalent to ‘807 patent.”

– It was not possible to determine whether CAP may be applied to Australian law firms without further information.

• D argued that “the categorical format” did not provide the information to assess applicability of CAP.


Categorical Log Sanctioned

• “A categorical log” may be used, for example, where a document-by-document listing (“itemized log”) would be unduly burdensome.

• However, to the extent that the Court finds any categorical justification inadequate, all documents within the category shall be ordered produced.

• Further, to the extent that the Court finds any individual document to have been improperly classified within a category, that document shall be ordered produced without further individual review.


Short Summary

• No uniform rule governs applicability of CAP

• Applying a patchwork of foreign privilege laws leads to varying results

• Privilege disputes involving multiple foreign jurisdictions can be expensive and time-consuming

• “The tactics” for satisfying the burden of persuasion is of great significance (ex. how to describe “privilege log”)


17

Short Summary (cont’d)

• Not just in U.S., we need to handle IP matters “in the world”

• Only a single instance of privilege denied breaches “a chain of confidentiality through the world”

→ Need for establishing a solution/resolution to the issue of CAP at the international level

Closed Meeting between CIPA and JPAA

• WIPO Standing Committee on the Law of Patents (“SCP”)

• CAP is one of the six main issues that have been studied at SCP

• Study Reports (SCP/13/4 and SCP/14/2) prepared by the Secretariat– Country study– International legal framework– Rationale for CAP– Key findings and potential areas of further work


International Activities on CAP

http://www.wipo.int/portal/index.html.en


WIPO SCP - 14th sessionJanuary 25 to 29, 2010

CIPA (EPI)“strongly support a worldwide unified CAP”

JPAA “strongly encourage establishment of WG for seeking the best solution to CAP”

Non-supporting States Supporting States

Argentina, India, Indonesia, Nigeria, Pakistan, Venezuela, etc.

Australia, China, France, Germany for EU, Guatemala, Iran, Japan, Spain, Switzerland, United Kingdom, etc.

* categorized by the presenter based on the minutes of the session

Many NGOs support

Lack of understanding of the issue Necessary to further study the issue in order

to identify adverse effects of having uniform legal standards

A matter of private law belonging to national jurisdiction

Harmonization of CAP would lead to substantive harmonization

Recognize importance of CAP issue Necessary to further study the issue in order

to identify practical solutions International development is necessary Support creation of Working Group

http://www.wipo.int/portal/index.html.en


• WIPO SCP 15th session (October 11 to 15, 2010)– Multilateral forum proceeds very slowly

Ex. Developing states link public policy issues to IP issues

– Possibly difficult to reach a unified conclusion/resolution– Need to support SCP as a body of legal professionals

• FTA/EPA(Free Trade Agreement/Economic Partnership Agreement)– Fundamental framework between bilateral states for

reducing/eliminating barriers in Tariff and Trade in Services– Faster and flexible “Package deal”

Possible Approaches to Resolution


“JPAA wish to foster Collaborative Work with CIPA in any possible ways for addressing the issue of CAP.”

Conclusive Message

http://www.cipa.org.uk/pages/home

http://www.jpaa.or.jp/

Thank you for your attention !

Koji HirayamaYUASA and [email protected]


Documents

Client Attorney Privilege