1. Report on Patents Committee Meeting Patrick Yangoh KIM APAA Council meeting, Oct. 21, 2008, Singapore

2. 2 Agenda 1.Opening Speech from Co-chairs 2.Introduction of Members 3.Singapore Group Report 4.Brief Discussion on Reports from Recognized Groups 5.WIPO Watching Reports 1) Report on PCT WG meeting 2) Report on SCP meeting 3) Report on WIPO-AIPPI Conference on Client Privilege 6.Discussion on Special Topics 1) Presentation on problem for clients operating in multiple jurisdictions concerning Client privilege 2) Presentation on Japanese experience in Client privilege problem 7.Discussion on and Adoption of Resolution concerning Client privilege 8.Taking Group photo 9.Closing Remarks of Co-chairs

3. 3 WIPO Watching Reports(1) – PCT WG PCT Working Group, Geneva, May 26-30 (attended by Mr. Ochi) I. Issues agreed to be Changed (1) Supplementary International Search/Further Consequential Amendments → January 1, 2009 (RU/SW/NO) [AU : late in 2009, EU: 2010]] (2) Amendment of Claims – Submission of revised claim only → July 1, 2009 (3) Filing and Processing of Sequence Listings → No page fee would be payable for a sequence listing filed in ST.25 text format but full page fees would be payable for all pages of a sequence listing filed in an ST.25 image format (as well as for sequence listings filed on paper, as at present) → January 1, 2009.

4. 4 WIPO Watching Reports(1) – PCT WG-cont. (4) Section Heading in Specification will be optional → July 1, 2009 (5) Addition of New Language of Publication: Korean & Portugues → January 1, 2009 (6) Transmittal of the International Application, Translations and Related Documents in electronic form

5. 5 WIPO Watching Reports(1) – PCT WG-cont.  II. Issues to be discussed further  (1) Enhancing the Value of International Search and Preliminary E xamination Under the PCT .  (2) Necessity of amendment without filing demand for inte rnational preliminary examination.  (3) Availability and use of Information from a centralized dat abase in International Bureau.  (4) Revising the Distinction Between International and National Ph ases  (5) Modification of Claims Fees – EPO will prepare more detailed proposal  (6) Modification of Physical Requirements of the International App lication –Colored Drawings  (7) Supplement of Missing Elements and Parts

6. 6 WIPO Watching Reports (2) – 12 th /SCP  12 th Session of Standing Committee of the Law of P atents June 23 – 26, 2008 Geneva (WIPO) (attended by Ms. Konish and Mr. An)  Summary  “Report on the International Patent System” prepared by Secretariat was on table. See http://www.wipo.int/edocs/mdocs/scp/en/scp_12/scp_12 _3.pdf  SCP identified a non-exhaustive list of 18 issues for further elaboration and discussions in the future

7. 7 WIPO Watching Reports (2) – 12 th /SCP-cont.  18 Issues identified in SCP 12 1. Economic impact of the patent system 2. Transfer of technology 3. Competition policy and anti-competitive practices 4. Dissemination of patent information (including the registration of licenses) 5. Standards and patents 6. Alternative models for innovation 7. Harmonization of basic notions of substantive patentability requirements (e.g. prior art, novelty, inventive step, industrial applicability, disclosure) 8. Disclosure of inventions 9. Database on search and examination reports

8. 8 WIPO Watching Reports (2) – 12 th /SCP-cont.  18 Issues identified in SCP 12 – cont. 10. Opposition system 11. Exceptions from patentable subject matter 12. Limitations to the rights 13. Research exemption 14. Compulsory licenses 15. Client-attorney privilege 16. Patents and health (including exhaustion, the Doha Declaration and other WTO instruments, patent landscaping) 17. Relationship between the patent system and the CBD (Genetic resources/Traditional knowledge/Disclosure of origin) 18. Relation of patents with other public policy issues

9. 9 WIPO Watching Reports (2) – 12 th /SCP-cont.  Secretariat will establish preliminary studies on the following four issues for next SCP meeting: Dissemination of patent information (including, inter alia, the establishment of a database on search and examination reports) Exception from patentable subject matter and limitations to the rights, inter alia, research exemption and compulsory licenses Patents and standards Client-attorney privilege

10. 10 WIPO Watching Reports (2) – 12 th /SCP-cont  Observations 1. Consensus on global harmonization was hardly seen at SCP 12 ** developed countries ≈ proponents for harmonization Harmonization will reduce costs for obtaining patents, reduce workloads of Patent Offices and improve quality of patents ** developing countries ≈ opponents for harmonization Harmonization developments, would establish more stringent international standards that may have a serious impact in fields of public interests may deprive governments of policy flexibilities for such as public health. Should include issues such as technology transfer, anticompetitive measures, genetic resources, and the like

11. 11 WIPO Watching Reports (2) – 12 th /SCP-cont  Observations – cont.  Next SCP meetings would identify the differences among the Member countries in the positions toward the patent system  After that, Members may reach a consensus as to whether/why/how they should move forward on harmonization  In 2009, a conference on issues relating to the implications of patents on certain areas of public policy such as health, the environment, climate change or food security will be held.

12. 12 Coffee Break

13. 13 WIPO Watching Report(3) – Conference on CP  May 22 to 23, 2008 WIPO HQ in Geneva (attended by Mr. Asai)  Object of the meeting  Enabling IP professionals and various organizations (e.g. governm ents and international organizations) to become well aware of the problem concerning the client privilege; for the purpose of  Paving the road for formulating an international rule or law for esta blishing any minimum standard for recognizing and extending the confidentiality or client privilege protected in one country, to another country.

14. 14 WIPO Watching Report(3) – Conference on CP- cont. Discussions in the meeting: 1.There was common consensus among the attendants that it is important that there be mutual recognition of the privilege for confidential communications between a client and his IP professionals internationally. 2. On the other hand, there are a wide range of opinions concerning how to formulate the minimum standard for IP professions and which types of IP subjects should be protected.

15. 15 WIPO Watching Report(3) – Conference on CP- cont. 3.It was the opinion of many attendants that IP professionals whose confidential communications with their clients are privileged should be registered and authorized in one country. 4. As for the kinds of IP subjects, it is the opinion of many attendants that the protection should be broadly applied to various kinds of IP subjects such as patents, trademarks, copyrights, computer software, data base, etc.

16. 16 WIPO Watching Report(3) – Conference on CP- cont. 5.From the company side, there was an opinion that confidential communications by in-house Patent attorneys should also be privileged, in order to eliminate any problem for making a treaty concerning Client privilege. 6. Finally, it was emphasized that it is necessary to enable governments and patent offices to fully understand the importance of harmonization of mutual recognition of client privilege so that they can support the harmonization of the protection of client privilege.

17. 17 WIPO Watching Report(3) – Conference on CP- cont.  Future Movement in WIPO discussion  Standing Committee of the Law of Patents (SCP) meeting held on June 2008 adopted four issues including “Client-Attorney Privilege” for next SCP meeting which is scheduled to be held on March 2009  WIPO Secretariat is requested to establish preliminary studies on that four issues.

18. 18 Discussion on Special Topics(1)-Overview  Attorney-Client Privilege (Presented by Mr. David Musker)  Evolved as a shield against discovery Excludes documents you would have to provide Excuses witness from testifying on some points  Now also relevant in: Criminal investigations Raids by competition or tax authorities  Once irrelevant in “ civil law countries  Now, TRIPS requires WTO countries to allow production of documents

19. 19 Discussion on Special Topics(1)-Overview-cont.  Rationale for privilege  Justice works best if: Clients can tell lawyers the full truth, and Lawyers can tell clients frankly what they think of the position, and what to do.  Clients and lawyers will not do that if: They know it may be reported to the Court They know it may be reported to the competitor.  So, it must be reliable “ An uncertain privilege, or one which purports to be certain but results in widely varying applications by the courts, is little better than no privilege at all ” Supreme Court, Upjohn Co. v. United States

20. 20 Discussion on Special Topics(1)-Overview-cont.  Why not discovery of advice?  Patent litigation involves non-technical tribunal answering technical questions  Requires objective and independent analysis by the tribunal, BUT  Tempting to take a cuts by relying on party ’ s own disclosed opinions

21. 21 Discussion on Special Topics(1)-Overview-cont.  Conclusion  IP does not stop at national borders  Patent agents frank advice required in addition to general lawyers ’  Many countries recognise the need for privilege  However, their intentions are thwarted when boundaries are crossed  International problem requires an international approach, implemented nationally

22. 22 Discussion on Special Topics(2)-JP Experience  JP Experience presented by Ms. Konishi  Right to Refuse to Testify (Old Art. 281; New Art.197 I )  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, documents on IP prepared by JP patent attorney were found NOT privileged.

23. 23 Discussion on Special Topics(2)-JP Experience- cont.  Current Japanese Civil Code of Procedure –1996 Amendment to Present  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.

24. 24 Discussion on Special Topics(2)-JP Experience- cont.  Better Era Has Come... –1996 Amendment to Present  In many IP litigation cases in US, after consulting JP CCP on the c omity 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 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 litigation s as additional qualification)  Practice on foreign IP prosecution has been newly added (2008-)

25. 25 Discussion on Special Topics(2)-JP Experience- cont.  ACP in Global Filing Context  More and more global filings  Many prosecutions and legal advises in many jurisdictions with res pect to substantively one invention  If one patent is litigated out of many corresponding patents, what’s gonna happen?

26. 26 Discussion on Special Topics(2)-JP Experience- cont.  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 some where 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 priv ilege is admitted for foreign IP advisor because such foreign IP adv isor is not locally registered…!

27. 27 Discussion on Special Topics(2)-JP Experience- cont.  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 A CP triggers harmonization of national laws.  Privilege for local IP advisors  Mutual recognition of privileges among countries

28. 28 Summary of Investigation 1. Common Law or Civil Law? → Civil Law 2. Does your country provide Client Privilege? → Yes 3. Title of IP professionals ? → Patent(TM) Attorney/Agent 4. Registration required ? → Yes 5. Are IP Prop. Privileged ? → ? 6. Do Client have Privilege ? → ?

29. 29 Resolution (Draft) The Asian Patent Attorneys Association (APAA), being broadly representative of patent attorneys in private practice in the Asian region, The Asian Patent Attorneys Association (APAA), being broadly representative of patent attorneys in private practice in the Asian region, passed at its 55th Council Meeting (Singapore) on October 21, 2008 the following resolution: passed at its 55th Council Meeting (Singapore) on October 21, 2008 the following resolution:

30. 30 Resolution (Draft) – cont. 1. Recognizing that intellectual property (IP) is international in character and requires protection in many different jurisdictions; protection in many different jurisdictions; 2.Recognizing that a client needs to have full and frank communications with full and frank communications with domestic and/or foreign qualified IP advisers domestic and/or foreign qualified IP advisers in the countries where the client wishes in the countries where the client wishes to obtain the best possible advice; to obtain the best possible advice;

31. 31 Resolution – cont. 3.Recognizing that confidential communications between a client and its qualified IP advisers should be protected as the client's own right should be protected as the client's own right for protecting the communications for protecting the communications as confidential or from being disclosed as confidential or from being disclosed in a discovery or similar system in a discovery or similar system in certain countries; in certain countries;

32. 32 Resolution – cont. 4.Understanding that confidential communications confidential communications between a client and its qualified IP advisers between a client and its qualified IP advisers which are protected in one country which are protected in one country are sometimes forced to be disclosed are sometimes forced to be disclosed in another country because in another country because the confidential communications which are the confidential communications which are privileged in one country are not privileged privileged in one country are not privileged in another country; and in another country; and

33. 33 Resolution – cont. 5.Recognizing that, once confidential communications have been disclosed in one country, such disclosure may prejudice the client’s position in other countries;

34. 34 Resolution – cont. 6.APAA resolves that confidential communications between a client and its qualified IP advisers (whether domestic or foreign) should be recognized as privileged communications internationally, so that the client's position can be appropriately protected internationally; and

35. 35 Resolution – cont. 7.APAA resolves that, in order to ensure full and frank communications between a client and its qualified IP advisers (whether domestic or foreign) without any risk of disclosure of their confidential communications, advisers (whether domestic or foreign) without any risk of disclosure of their confidential communications, an international consensus on setting an international consensus on setting minimum standards of privilege should be built so that all national legal systems should be harmonized minimum standards of privilege should be built so that all national legal systems should be harmonized in such a way that such confidential communications in such a way that such confidential communications can enjoy privilege internationally. can enjoy privilege internationally. (End)

36. 36 Patrick Yangoh KIM Thank you !!