1 Attorney-Client Privilege on IP -Japanese Experiences Kay Konishi APAA 2008 Singapore, Oct.19, Patent Committee

2 1. Discovery and ACP –Original Context  Unless otherwise privileged, all kinds of information is subject to the extensive disclosure under a civil litigation procedure.  Attorney-Client Privilege (ACP) is an exception: Only in case that « attornies » and clients can enjoy ACP, full and frank communications on IP between clients and « attornies » are ensured without a risk of adverse outcome.  In major old US cases, ACP was admitted only to US bar members (Duplan Carp case (1974)).

3 2. Discovery and ACP –Cross-border Context  Where foreign patent agent communications touch base with the US, namely in the case of US applications and patents, ACP requires the direction and control of U.S. attorneys: «Touch Base Analysis»  Where foreign patent agent communications do not touch base with the U.S., namely in the case of corresponding Japanese applications and patents, we have to consult the law of foreign country, as a matter of comity, regarding whether the foreign law provides a privilege comparable to the ACP: «Comity Analysis» (Bristol-Myers case)  Next question: What does JP law say?

4 3. Old Japanese Civil Code of Procedure –Prior to 1996 Amendment  Right to Refuse to Testify (Old Art. 281)  Attorney at law and patent attorney (benrishi) can refuse to testify regarding facts that: (i)were obtained in the course of professional duties; and (ii)should be kept confidential  Matters relating to technical secret/ trade secret  NO provision that allows to refuse to produce documents on IP prepared by patent attorney (in possession by client and patent attorney)  In many old IP litigation cases in US, after consulting JP CCP on the comity basis, documents on IP prepared by JP patent attorney were found NOT privileged.

5 4. Current Japanese Civil Code of Procedure –1996 Amendment to Present  Right to Refuse to Testify (Art. 197 I(2),(3))  Attorney at law and patent attorney (benrishi) can refuse to testify regarding facts that: (i)were obtained in the course of professional duties; and (ii)should be kept confidential  Matters relating to technical secret/ trade secret  Document Production (Art. 220 (4)(c),(d))  Attorney at law and patent attorney and client can refuse to produce documents that contain the «facts» under Art. 197 I(2), if the document is to be kept confidential.  Client can refuse to produce documents that: (i)contain the «matters» under Art. 197 I(3); or (ii)Were created for sole purpose of clients’ use.

6 5. Better Era Has Come... –1996 Amendment to Present  In many IP litigation cases in US, after consulting JP CCP on the comity basis, documents on IP prepared by JP patent attorney were found privileged.  VLT Corp. v. Unitrode Corp. case (D.Mass. 2000)  Knoll Pharms. Co. v. Teva Pharms. (N.D.III. 2004)  Eisai Ltd. V. Dr. Reddy’s Laboratories case (S.D.N.Y. 2005) …  Scope of patent attorney’s «Professional Duties» under the Japanese Patent Attorneys Law  Prosecution of IP vis-a-vis JPO  Advice on contracts relating to IP  Representative in IP appeal litigations (+ IP infringement litigations as additional qualification)  Practice on foreign IP prosecution has been newly added (2008-)

7 6. ACP in Global Filing Context  More and more global filings  Many prosecutions and legal advises in many jurisdictions with respect to substantively one invention  If one patent is litigated out of many corresponding patents, what’s gonna happen?

8 7. Why we need international consensus on ACP?  Unless ACP is admitted in every jurisdiction, once a corresponding patent is litigated in a country with discovery, IP legal advise somewhere would be subject to production in the discovery procedure.  Even in the US, decisions may vary from state to state.  In some jurisdictions other than the US, case law rules that NO privilege is admitted for foreign IP advisor because such foreign IP advisor is not locally registered…!  Eli Lilly & Co. v. Pfizer Ireland Pharma. in AU  Lilly Icos LLC v. Pfizer Ireland Pharma. In Canada

9 8. Baby Steps to Move Forward  Lack of privilege poses an impediment to full and frank communications for clients to obtain legal advise on IP.  International consensus to set minimum standards of ACP triggers harmonization of national laws.  Privilege for local IP advisors  Mutual recognition of privileges among countries

10 Kay Konishi