1 US and Japan Sides Discussion and Update: Attorney-Client Privilege Takahiro FUJIOKA Meisei International Patent Firm AIPLA 2004 Mid-Winter Institute pre-meeting January 28, La Quinta, CA

2 Contents 1. Background 2. Problems Japan side US side 3. Solutions (Harmonization) First Step : PCT Reform Second Step: Patent Law Treaty (PLT) Final Step :Substantive PLT (SPLT) 4. Conclusion 5. Disclaimer and Author

3 1.1 Background (Global environment ) US is the exceptional country in that most patent prosecutors are permitted to appear before the court. However, the Attorney-Client communications take place on a global scale during patent prosecution where most patent prosecutors are NOT permitted to appear before the court. 1 1: AIPPI Q163

4 1.2 Background (My opinion) The purpose of Attorney-Client privilege is to encourage a client to provide all relevant information to the attorney and to protect advice given during the course of the attorney-client relationship. 2 A Foreign patent attorney has the same mission as a US patent prosecution attorney does. Therefore, a Client of a Foreign patent attorney should be equitably entitled to the same relationship. 2: A PRACTICAL GUIDE TO THE ATTORNEY-CLIENT PRIVILEGE by Arizona State University

5 1.3 Resolves of AIPPI Q163 Resolves: That AIPPI supports the provision throughout all of the national jurisdictions of rules of professional practice and/or laws which recognize that the protections and obligations of the attorney-client privilege should apply with the same force and effect to confidential communications between patent and trademark attorneys, whether or not qualified as attorneys at law (as well as agents admitted or licensed to practice before their local or regional patent and trademark offices), and their clients, regardless of whether the substance of the communication may involve legal or technical subject matter.

6 1.4 Background (Japanese effort) (The revised Civil Proceedings Act of Japan ) Patent attorneys in Japan, who may or may not be lawyers, have a statutory right of privilege. Statutory privilege for Japanese patent attorneys is found in art. 197 and 220 of the Civil Proceedings Act, enacted in Article 197 exempts patent attorneys from being forced to disclose facts obtained while carrying out professional duties, while Art. 220 prevents the production of evidence if it involves trade secrets or proprietary information. 3 3: Discussion Paper on Proposals for Privilege Protection and Self-Regulation of Patent and Trade-mark Agents by The Canadian Intellectual Property Office

7 1.4 The revised Civil Proceedings Act of Japan The Civil Proceedings Act of Japan reads: Article 197 (excerption) (ii) In the case where the witness is questioned as to the knowledge of facts which he or she, being or once been a doctor, dentist, pharmacist, pharmaceutical products distributor, midwife, attorney at law, patent attorney, advocate, notary public or an occupant of a post connected with religion, devotion or worship, has obtained in the exercise of professional duties and which facts should be kept in secrecy; Article 220 (excerption) A person possessing a document shall not refuse to submit the document in the following cases:... (iv)... in the case where the document (except documents which a person who is or had been a public servant possesses or keeps for his or her professional duties) does not fall under any one of the following documents. (2) A document stating the facts prescribed in Article 197(1)(ii) or the matters prescribed in Article 197(1)(iii) and in connection with which or the duty of keeping secrecy has not yet been relieved.

8 2.1 Problems ( Japan side) The Attorney-Client Privilege and the work product immunity raise complex issues when communications take place on a global scale. 4 4: The Attorney-Client Privilege and Foreign Attorneys or Patent Agents (Analysis of Astra Aktiebolag v. Andrx Pharmaceuticals, 208 F.R.D. 92 (S.D.N.Y. 2002) by Kathlyn Card-Beckles January 2003 Kenyon & Kenyon

9 2.2 Problems ( Japan side ) US law governs if the case touches base in the US. 4 Japanese law would only be considered if: 4 1) the case did not touch base in the US; and 2) Japanese law was not contrary to US law. This situation is not fair for Japanese clients.

Problems (US side) Community Patent System (CPS) in Europe CPS outline was finally agreed in Centralized Judicial System in Luxembourg Fair Judicial system for Foreign Clients. A potential new global Judicial System Judicial System shifting (New rival) From U.S. to Europe

Solutions (First Step) PCT Reform (Enhancement of Article 42) Current Article 42 Results of National Examination in Elected Offices No elected Office receiving the international preliminary examination report may require that the applicant furnish copies, or information on the contents, of any papers connected with the examination relating to the same international application in any other elected Office.

Solutions (First Step) Addition of Article 42bis Article 42bis (My Proposal) Client-Attorney Communication No judicial authority may require that the patentee or the applicant furnish confidential communications between the patentee or the applicant and their patent attorneys in any other countries, whether or not qualified as attorneys at law, regardless of whether the substance of the communication may involve legal or technical subject matter, relating to the international application.

Solutions (To Final Step) Patent Law Treaty (PLT) approach: Including a global Attorney-Client Privilege system into PLT in the first Assembly Substantive PLT (SPLT) approach: Constituting SPLT including a global Attorney-Client Privilege system.

14 4. Conclusion Let’s do it !

15 4. Disclaimer and Author This presentation shows a personal opinion of Takahiro FUJIOKA, which is NOT authorized by Japan Patent Attorneys Association (JPAA) as its official opinion. Takahiro FUJIOKA is: A Japanese Patent Attorney A 5 th session of PCT Reform WG delegate of JPAA A member of IP Reform committee of JPAA reached at