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Attorney-Client Privilege on Attorney-Client Privilege on IPIP-Japanese Experiences-Japanese Experiences

Kay KonishiKay KonishiAPAA 2008 Singapore, APAA 2008 Singapore,

Oct.19, Patent CommitteeOct.19, Patent Committee

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1. Discovery and ACP 1. Discovery and ACP –Original Context–Original Context Unless otherwise Unless otherwise privilegedprivileged, all kinds of , all kinds of

information is subject to the extensive information is subject to the extensive disclosure under a civil litigation procedure.disclosure under a civil litigation procedure.

Attorney-Client Privilege (ACP) is an Attorney-Client Privilege (ACP) is an exception: Only in case that « attornies » and exception: Only in case that « attornies » and clients can enjoy ACP, full and frank clients can enjoy ACP, full and frank communications on IP between clients and communications on IP between clients and « attornies » are ensured without a risk of « attornies » are ensured without a risk of adverse outcome.adverse outcome.

In major old US cases, ACP was admitted only In major old US cases, ACP was admitted only to US bar members (Duplan Carp case (1974)). to US bar members (Duplan Carp case (1974)).

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2. 2. Discovery and ACP Discovery and ACP –Cross-border Context–Cross-border Context

Where foreign patent agent communications Where foreign patent agent communications touch touch basebase with the US, namely in the case of US with the US, namely in the case of US applications and patents, ACP requires the applications and patents, ACP requires the direction and control of U.S. attorneys: direction and control of U.S. attorneys: «Touch «Touch Base Analysis»Base Analysis»

Where foreign patent agent communications do not touch Where foreign patent agent communications do not touch base with the U.S., namely in the case of corresponding base with the U.S., namely in the case of corresponding Japanese applications and patents, we have to consult the Japanese applications and patents, we have to consult the law of foreign country, law of foreign country, as a matter of comityas a matter of comity, regarding , regarding whether the foreign law provides a privilege comparable whether the foreign law provides a privilege comparable to the ACPto the ACP: : «Comity Analysis»«Comity Analysis» (Bristol-Myers case) (Bristol-Myers case)

Next question: What does JP law say?Next question: What does JP law say?

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3. Old Japanese Civil Code of 3. Old Japanese Civil Code of ProcedureProcedure –Prior to 1996 Amendment–Prior to 1996 Amendment

Right to Refuse to Testify (Old Art. 281) Right to Refuse to Testify (Old Art. 281) Attorney at law and patent attorney (Attorney at law and patent attorney (benrishibenrishi) )

can refuse to testify regarding facts that:can refuse to testify regarding facts that:(i)(i) were obtained in the course of professional duties; andwere obtained in the course of professional duties; and

(ii)(ii) should be kept confidentialshould be kept confidential

Matters relating to technical secret/ trade secretMatters relating to technical secret/ trade secret NO provision that allows to refuse to produce documents NO provision that allows to refuse to produce documents

on IP prepared by patent attorney (in possession by client on IP prepared by patent attorney (in possession by client and patent attorney)and patent attorney)

In many old IP litigation cases in US, after consulting JP CCP In many old IP litigation cases in US, after consulting JP CCP on the comity basis, documents on IP prepared by JP on the comity basis, documents on IP prepared by JP patent attorney were found NOT privileged.patent attorney were found NOT privileged.

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4. Current Japanese Civil Code of 4. Current Japanese Civil Code of ProcedureProcedure –1996 Amendment to Present–1996 Amendment to Present

Right to Refuse to Testify (Art. 197 I(2),(3)) Right to Refuse to Testify (Art. 197 I(2),(3)) Attorney at law and patent attorney (Attorney at law and patent attorney (benrishibenrishi) can ) can

refuse to testify regarding facts that:refuse to testify regarding facts that:(i)(i) were obtained in the course of professional duties; andwere obtained in the course of professional duties; and

(ii)(ii) should be kept confidentialshould be kept confidential Matters relating to technical secret/ trade secretMatters relating to technical secret/ trade secret

Document Production (Art. 220 (4)(c),(d))Document Production (Art. 220 (4)(c),(d)) Attorney at law and patent attorney and client can refuse to Attorney at law and patent attorney and client can refuse to

produce documents that contain the produce documents that contain the «facts» «facts» under Art. 197 under Art. 197 I(2), if the document is to be kept confidential.I(2), if the document is to be kept confidential.

Client can refuse to produce documents that:Client can refuse to produce documents that:(i)(i) contain the contain the «matters» «matters» under Art. 197 I(3); orunder Art. 197 I(3); or(ii)(ii) Were created for sole purpose of clients’ use.Were created for sole purpose of clients’ use.

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5. Better Era Has Come...5. Better Era Has Come... –1996 Amendment to Present–1996 Amendment to Present

In many IP litigation cases in US, In many IP litigation cases in US, after consulting JP CCP after consulting JP CCP on the comity basis, documents on IP prepared by JP patent on the comity basis, documents on IP prepared by JP patent attorney were found privileged.attorney were found privileged.

VLT Corp. v. Unitrode Corp. case (D.Mass. 2000)VLT Corp. v. Unitrode Corp. case (D.Mass. 2000) Knoll Pharms. Co. v. Teva Pharms. (N.D.III. 2004)Knoll Pharms. Co. v. Teva Pharms. (N.D.III. 2004) Eisai Ltd. V. Dr. Reddy’s Laboratories case (S.D.N.Y. 2005) …Eisai Ltd. V. Dr. Reddy’s Laboratories case (S.D.N.Y. 2005) …

Scope of patent attorney’s Scope of patent attorney’s «Professional Duties» under «Professional Duties» under the Japanese Patent Attorneys Lawthe Japanese Patent Attorneys Law

Prosecution of IP vis-a-vis JPOProsecution of IP vis-a-vis JPO Advice on contracts relating to IPAdvice on contracts relating to IP Representative in IP appeal litigations (+ IP infringement litigations as Representative in IP appeal litigations (+ IP infringement litigations as

additional qualification)additional qualification) Practice on foreign IP prosecution has been newly added (2008-)Practice on foreign IP prosecution has been newly added (2008-)

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6. ACP in Global Filing Context6. ACP in Global Filing Context

More and more More and more global filingsglobal filings

Many prosecutions Many prosecutions and legal advises in and legal advises in many jurisdictions many jurisdictions with respect to with respect to substantively one substantively one inventioninvention

If one patent is If one patent is litigated out of many litigated out of many corresponding corresponding patents, what’s patents, what’s gonna happen?gonna happen?

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7. Why we need international 7. Why we need international consensus on ACP?consensus on ACP?

Unless ACP is admitted in every jurisdiction, once a Unless ACP is admitted in every jurisdiction, once a corresponding patent is litigated in a country with corresponding patent is litigated in a country with discovery, IP legal advise somewhere would be discovery, IP legal advise somewhere would be subject to production in the discovery procedure.subject to production in the discovery procedure.

Even in the US, decisions may vary from state to Even in the US, decisions may vary from state to state.state.

In some jurisdictions other than the US, case law rules In some jurisdictions other than the US, case law rules that NO privilege is admitted for foreign IP advisor that NO privilege is admitted for foreign IP advisor because such foreign IP advisor is not locally because such foreign IP advisor is not locally registered…!registered…!

Eli Lilly & Co. v. Pfizer Ireland Pharma. in AUEli Lilly & Co. v. Pfizer Ireland Pharma. in AU Lilly Icos LLC v. Pfizer Ireland Pharma. In CanadaLilly Icos LLC v. Pfizer Ireland Pharma. In Canada

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8. Baby Steps to Move Forward8. Baby Steps to Move Forward

Lack of privilege poses an impediment to full Lack of privilege poses an impediment to full and frank communications for clients to and frank communications for clients to obtain legal advise on IP.obtain legal advise on IP.

International consensus to set minimum International consensus to set minimum standards of ACP triggers harmonization of standards of ACP triggers harmonization of national laws.national laws.

Privilege for local IP advisorsPrivilege for local IP advisors Mutual recognition of privileges among countriesMutual recognition of privileges among countries

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Kay KonishiKay Konishikonishi@miyoshipat.co.jpkonishi@miyoshipat.co.jp