1 Report on WIPO Client Privilege Meeting Kenji Asai October 19, 2008 APAA Patents Committee.

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Report on WIPO Client Report on WIPO Client

Privilege MeetingPrivilege Meeting

Kenji AsaiKenji AsaiOctober 19, 2008 October 19, 2008

APAA Patents CommitteeAPAA Patents Committee

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WIPO Client Privilege MeetingWIPO Client Privilege Meeting

May 22 to 23, 2008 May 22 to 23, 2008 WIPO HQ in GenevaWIPO HQ in Geneva

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AttendantsAttendants

29 member states29 member states ：： Australia, Belgium, Canada, China, Australia, Belgium, Canada, China,

Denmark, US, Finland, United Kingdom (UK), Denmark, US, Finland, United Kingdom (UK), Singapore, Switzerland, etc.Singapore, Switzerland, etc.

2 intergovernmental organizations2 intergovernmental organizations ： ： United Nations and WTOUnited Nations and WTO

19 NGOs19 NGOs ：　：　 APAA, AIPLA, JPAA, CIPA, FICPI, IPIC, EPI, etc.APAA, AIPLA, JPAA, CIPA, FICPI, IPIC, EPI, etc.

98 individuals from 40 states98 individuals from 40 states ：　：　 General Lawyers, Patent Attorneys, General Lawyers, Patent Attorneys,

Company persons, etc.Company persons, etc.

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4 persons from WIPO 4 persons from WIPO Mr. Francis Gurry, Deputy Directer Mr. Francis Gurry, Deputy Directer

GeneralGeneral Mr. Philippe Baechtold, Head of Mr. Philippe Baechtold, Head of

Patent Law SectionPatent Law Section Mr. Ewald Glantschnig, Senior Mr. Ewald Glantschnig, Senior

Counsellor of Patent Law SectionCounsellor of Patent Law Section Ms. Tomoko Miyamoto, Senior Ms. Tomoko Miyamoto, Senior

Counsellor of Patent Law SectionCounsellor of Patent Law Section

Attendants from WIPO

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20 Speakers20 Speakers Mr. Ronald Myrick (President of AIPPI) (USA)Mr. Ronald Myrick (President of AIPPI) (USA) Mr. Jochen Bühling, Reporter General of AIPPIMr. Jochen Bühling, Reporter General of AIPPI Mr. Michael Dowling, Allens Arthur Robinson (Australia, Melbourne)Mr. Michael Dowling, Allens Arthur Robinson (Australia, Melbourne) Dato V.L. Kandan, Consultant of Shearn Delamore & Co., (Malaysia)Dato V.L. Kandan, Consultant of Shearn Delamore & Co., (Malaysia) Mr. Steven Garland, Partner of Smart & Biggar (Canada)Mr. Steven Garland, Partner of Smart & Biggar (Canada) Mr. Pravin Anand, Senior Partner of Anand and Anand (India)Mr. Pravin Anand, Senior Partner of Anand and Anand (India) Mr. Thierry Mollet-Vieville, Vice president of AIPPI (France)Mr. Thierry Mollet-Vieville, Vice president of AIPPI (France) Ms. Anette Hegner, Vice chair of EPI (Denmark)Ms. Anette Hegner, Vice chair of EPI (Denmark) Mr. Yuzuru Okabe, Okabe International Patent Office (Japan)Mr. Yuzuru Okabe, Okabe International Patent Office (Japan) Mr. Cristobal Porzio, Porzio, Rios & Associates (Chile)Mr. Cristobal Porzio, Porzio, Rios & Associates (Chile) Mr. David Musker, Partner of RGC Jenkins (United Kingdom)Mr. David Musker, Partner of RGC Jenkins (United Kingdom) Mr. Thierry Calame, Deputy Reporter General of AIPPI (Switzerland)Mr. Thierry Calame, Deputy Reporter General of AIPPI (Switzerland) Ms. Van Zant, FICPI (Canada)Ms. Van Zant, FICPI (Canada) Mr. Alan Senior, FICPI (United Kingdom)Mr. Alan Senior, FICPI (United Kingdom) Mr. David Hill, Finnegan, Henderson, Farabow, Garrett & Dunner (USA)Mr. David Hill, Finnegan, Henderson, Farabow, Garrett & Dunner (USA) Mr. Timothy Jackson, Partner of Baldwin (New Zealand)Mr. Timothy Jackson, Partner of Baldwin (New Zealand) Mr. Wouter Pors, Partner of Bird & Bird (Netherlands)Mr. Wouter Pors, Partner of Bird & Bird (Netherlands) Mr. Michael Jewess, ICC (United Kingdom) Mr. Michael Jewess, ICC (United Kingdom) Mr. Eric le Forestier, FICPI (France)Mr. Eric le Forestier, FICPI (France) Mr. Chew Phye Keat, Senior Partner of Raja, Darryl & Loh (Malaysia) Mr. Chew Phye Keat, Senior Partner of Raja, Darryl & Loh (Malaysia)

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Object of the meetingObject of the meeting Enabling IP professionals and various Enabling IP professionals and various

organizations (e.g. governments and organizations (e.g. governments and international organizations) to become international organizations) to become well aware of the problem concerning the well aware of the problem concerning the client privilege; for the purpose ofclient privilege; for the purpose of

Paving the road for formulating an Paving the road for formulating an international rule or law for establishing international rule or law for establishing any minimum standard for recognizing any minimum standard for recognizing and extending the confidentiality or client and extending the confidentiality or client privilege protected in one country, to privilege protected in one country, to another country.another country.

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What is the problem?What is the problem?

The following cases will answer:The following cases will answer: 2004 Australia case (AU): 2004 Australia case (AU):

Eli Lilly & Company v Pfizer Ireland Eli Lilly & Company v Pfizer Ireland Pharmaceuticals (No 2) [2004] FCA 850 Pharmaceuticals (No 2) [2004] FCA 850 (30 June 2004) (30 June 2004)

2006 Canada case (CA): 2006 Canada case (CA): Lilly Icos LLC v. Pfizer Ireland Lilly Icos LLC v. Pfizer Ireland

Pharmaceuticals, 2006 FC 1465, (2006), Pharmaceuticals, 2006 FC 1465, (2006), (2007)2 F.C.R. D-12 (2007)2 F.C.R. D-12

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Background of the casesBackground of the cases

Patentee: Pfizer (“X”):Patentee: Pfizer (“X”): X filed PCT application based on UK X filed PCT application based on UK

applicationapplication Then, patents issued in UK, AU and CAThen, patents issued in UK, AU and CA Litigation took place in AU and CALitigation took place in AU and CA Of course, the communications should have naturally taken Of course, the communications should have naturally taken

place between the inventors and UK patent agents until place between the inventors and UK patent agents until patents issued and thereafter. These communications are patents issued and thereafter. These communications are the subject for the discovery procedures in AU and CA.the subject for the discovery procedures in AU and CA.

Opponent: Eli Lilly (“Y”):Opponent: Eli Lilly (“Y”): Y requested discoveries in AU and CA in the Y requested discoveries in AU and CA in the

litigations, respectively.litigations, respectively. Y requested that the communications between the Y requested that the communications between the

inventors and the UK patent agents should be disclosed in inventors and the UK patent agents should be disclosed in the discovery procedures.the discovery procedures.

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UK

AU

CA

In 2004

In 2006

UK, AU and CA are all Common law countries.

Priority: 06/09, 1993Patented: 03/11, 1998

Patented: 07/07, 1998

Publication date: 05/13, 1997

Patentee X: Pfizer Group

Opponent Y: Eli Lilly Group

Communications took placeBetween the inventors and UKPatent Agents in UK

Subject for discovery:The communicationsbetween the inventorsand UK patent agents

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Situation in UKSituation in UK

Confidential Communications between Confidential Communications between a Client and its Patent agent are a Client and its Patent agent are privileged in UK.privileged in UK.

Such Communications are immune to Such Communications are immune to the discovery in UK and not disclosed the discovery in UK and not disclosed in the discovery procedure in UK.in the discovery procedure in UK.

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Decision in AU 2004Decision in AU 2004 In AU, confidential communications between In AU, confidential communications between

a Client and its Patent agent are privileged, a Client and its Patent agent are privileged, but such a Patent agent must be registered but such a Patent agent must be registered in AU.in AU.

The UK Patent agents are not registered in The UK Patent agents are not registered in AU.AU.

Therefore, the communications between the Therefore, the communications between the inventors and their UK Patent agents are not inventors and their UK Patent agents are not privileged in AU in the discovery.privileged in AU in the discovery.

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Decision in CA 2006Decision in CA 2006

In CA,In CA, confidential communications between confidential communications between a client and its lawyer are privileged, but a client and its lawyer are privileged, but Patent agents are not privileged to the Patent agents are not privileged to the communications.communications. The reason is that patent The reason is that patent agents as such are not members of the legal agents as such are not members of the legal profession (Federal Court of Appeal).profession (Federal Court of Appeal).

The UK Patent agents are not lawyers.The UK Patent agents are not lawyers. Therefore, the communications between the Therefore, the communications between the

inventors and their UK Patent agents are not inventors and their UK Patent agents are not privileged in CA in the discovery.privileged in CA in the discovery.

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There are countries having different There are countries having different jurisdictions, common law countries and civil jurisdictions, common law countries and civil law countries.law countries.

However, the above cases took place among However, the above cases took place among the same common law countries.the same common law countries.

The problem regarding client privilege may The problem regarding client privilege may more often take place between the civil law more often take place between the civil law countries and the common law countries, countries and the common law countries, because the civil law countries basically because the civil law countries basically have no privilege corresponding to Client have no privilege corresponding to Client privilege originally growing out of the privilege originally growing out of the common law tradition.common law tradition.

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Historical movements Historical movements concerning CP situationconcerning CP situation

In 2000, FICPI Vancouver resolutionIn 2000, FICPI Vancouver resolution In Jun. 2003, FICPI Berlin resolutionIn Jun. 2003, FICPI Berlin resolution In Oct. 2003, AIPPI ResolutionIn Oct. 2003, AIPPI Resolution In 2004, AU discovery took placeIn 2004, AU discovery took place In 2005, AIPPI Submission to WIPOIn 2005, AIPPI Submission to WIPO In 2006, CA discovery took placeIn 2006, CA discovery took place In 2008, WIPO-AIPPI Joint ConferenceIn 2008, WIPO-AIPPI Joint Conference

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In 2000, FICPI Vancouver In 2000, FICPI Vancouver resolutionresolution

ResolvesResolves that the client of an Intellectual Property Practitioner that the client of an Intellectual Property Practitioner should be afforded in relation to communications with that should be afforded in relation to communications with that practitioner the protection of legal professional privilege,practitioner the protection of legal professional privilege,

UrgesUrges appropriate authorities in countries or regionsappropriate authorities in countries or regions which do which do not now afford such protection not now afford such protection to amend their laws as to amend their laws as necessary tonecessary to provide legal professional privilege in relation to provide legal professional privilege in relation to communicationscommunications between a client and a registered Intellectual between a client and a registered Intellectual Property Practitioner or practitioners who are members of an Property Practitioner or practitioners who are members of an accredited professional association, accredited professional association, andand that that all countries all countries should recognize the legal professional privilege that exists in should recognize the legal professional privilege that exists in other countriesother countries,,

And urgesAnd urges appropriate authorities in countries and regions to appropriate authorities in countries and regions to amend their laws to establish an appropriate system of amend their laws to establish an appropriate system of recognition of qualified intellectual property practitionersrecognition of qualified intellectual property practitioners..

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In Jun. 2003, FICPI BerlinIn Jun. 2003, FICPI Berlin ResolutionResolution

FICPI resolves :FICPI resolves : 5)5) That a client should enjoy client attorney/agent That a client should enjoy client attorney/agent

professional privilege in connection with any direct or professional privilege in connection with any direct or indirect communication with a professional indirect communication with a professional representative in his own country or anotherrepresentative in his own country or another; and; and

6)6) That due to reasons of public interest, That due to reasons of public interest, associations of free professionals in each country associations of free professionals in each country should establish sets of rules on ethical conduct, should establish sets of rules on ethical conduct, continuing education and cover for professional liability continuing education and cover for professional liability to be complied with by free professional to be complied with by free professional representatives in that country.representatives in that country.

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AIPPI Resolution AIPPI Resolution (ExCo Lucerne Oct. 2003)(ExCo Lucerne Oct. 2003)

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

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AIPPI SubmissionAIPPI Submissionto WIPO in 2005to WIPO in 2005

AIPPI submits thatAIPPI submits that the makingthe making (including (including subsequent implementation) subsequent implementation) of a treaty of a treaty prescribing minimum standards of privilege which prescribing minimum standards of privilege which are to apply to communications relating to advice are to apply to communications relating to advice given by IP advisers, is requiredgiven by IP advisers, is required. . The protection of The protection of privilege in one country must be extended by that privilege in one country must be extended by that country to an IP adviser in any other countrycountry to an IP adviser in any other country..

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May 2008, WIPO-AIPPI Joint May 2008, WIPO-AIPPI Joint ConferenceConference

Since Since AIPPI submission to WIPO in 2005AIPPI submission to WIPO in 2005, there has not , there has not been any development concerning the situation on been any development concerning the situation on Client Privilege. Client Privilege.

Therefore, this conference was held for the purpose Therefore, this conference was held for the purpose which was already explained before:which was already explained before: in order to enable IP professionals and various in order to enable IP professionals and various

organizations (e.g. governments and international organizations (e.g. governments and international organizations) to become well aware of the problem organizations) to become well aware of the problem concerning the client privilege; for the purpose of concerning the client privilege; for the purpose of

Paving the road for formulating an international rule or law Paving the road for formulating an international rule or law for establishing any minimum standard for recognizing and for establishing any minimum standard for recognizing and extending the confidentiality or client privilege protected in extending the confidentiality or client privilege protected in one country, to another country.one country, to another country.

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Content of the ConferenceContent of the Conference

Opening speechOpening speech Mr. Gurry,Mr. Gurry, Deputy Director General of WIPO Deputy Director General of WIPO

One of our tasks is to draw the attention of One of our tasks is to draw the attention of policy makers to the importance of this policy makers to the importance of this practical, technical privilege issue.practical, technical privilege issue.

Mr. Myrick, Mr. Myrick, President of AIPPIPresident of AIPPI We are going to be studying and discussing We are going to be studying and discussing

privilege issues, for the purpose of privilege issues, for the purpose of promoting the rule of law.promoting the rule of law.

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1. Definition and overview of the issue (Keynote speech)1. Definition and overview of the issue (Keynote speech)2. Scope of privilege and issues in some common law systems2. Scope of privilege and issues in some common law systems3. Scope of privilege and issues in some civil law systems3. Scope of privilege and issues in some civil law systems4. Pitfalls and obstacles for clients operating in multiple 4. Pitfalls and obstacles for clients operating in multiple

jurisdictionsjurisdictions5. Nature of the problem- is this a matter of public interest as 5. Nature of the problem- is this a matter of public interest as

well as private interests, and where does the balance lie well as private interests, and where does the balance lie between those interests?between those interests?

6. Outcomes of litigation and needs arising in relation to 6. Outcomes of litigation and needs arising in relation to client/IP professional privilege conducted in particular client/IP professional privilege conducted in particular countries: Australia, Canada, United Kingdom, United countries: Australia, Canada, United Kingdom, United States of AmericaStates of America

Titles of Subjects Discussed in the Conference (1)

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Titles of Overview of Subjects Overview of Subjects of the Conference (2)of the Conference (2)

7. Experiences with recent developments in various jurisdictions

8. Privilege – the perspective of companies, including those with in-house IP counsel

9. Summary of the problems and issues involved in solving the problems, from different perspectives

10. Prospects for improvement: what are the options?11. Discussion by panelists with Conference attendees

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Subject 1: Definition and overview Subject 1: Definition and overview of the issue (Keynote speech)of the issue (Keynote speech)

Explained background of “privilege” issue; importance of “privilege”; “privilege” issues in various jurisdictions; and AIPPI solutions or proposals.

As for what is “privilege”? Speaker explained:

“Privilege” is a right of a person not to have to disclose information which would otherwise have been required

“Privilege” allows the person to keep documents secret and to be silent on certain issues

“Privilege” covers confidential communications between the client and its adviser with regard to certain questions and issues related to the specific case, but

Limiting the privilege limits the possibility to obtain the best advice through “full and frank communications,” for fear that important information may be forced to be disclosed in another country, and

Insufficient advice leads to lack of quality of IP (loss of the whole picture).

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Subject 2: Scope of privilege and issues in some common law systems Speakers from common law countries (Malaysia, Canada and

India) explained the scopes of privilege and issues in their systems.

Subject 3: Scope of privilege and issues in some civil law systems Speakers from civil law countries explained the scopes of

privilege and issues in their systems. France, EPO, Japan and several South American countries (Chile,

Argentine, Brazil, Columbia and Peru)

Subject 4: Pitfalls and obstacles for clients operating in multiple jurisdictions The speakers explained pitfalls and obstacles which the

clients may face in operating in multiple jurisdiction, based on several specific and imaginary cases.

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Subject 5: Nature of the problemSubject 5: Nature of the problem The speaker explained the rationales underpinning legal

professional privilege in relation to laws of privilege in several countries (Australia, USA, Europe and Switzerland).

The speaker concluded that there is no controversy in accepting and applying AIPPI’s proposal for a treaty on client privilege in IP professional advice.

Subject 6: Outcomes of litigation and needs arising in Subject 6: Outcomes of litigation and needs arising in relation to client/IP professional privilegerelation to client/IP professional privilege The speakers explained the outcomes of litigation and needs utcomes of litigation and needs

arising in relation to client/IP professional privilegearising in relation to client/IP professional privilege in relation to Australia, Canada, United Kingdom and United States of America.

In Australia, the speaker stated that NGOs have proposed new provision for the section of 200(2) of the Patents Act, so as to broaden the recognition of privilege of the foreign patent attorneys.

In Canada, the speaker explained that so far, it appears that Canadian Courts are not prepared to recognize the privilege of agents or patent attorneys in other jurisdictions who enjoy statutory privilege, because there is no equivalent legislation In Canada.

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Subject 7: Experiences with recent Subject 7: Experiences with recent developments in various jurisdictions in developments in various jurisdictions in New Zealand and NetherlandsNew Zealand and Netherlands The speaker explained: the recently modified New Zealand

Evidence Act 2006 is a strengthening of the statutory privilege. The privilege extends to overseas practitioners in a country specified in an Order in Council. However, to date no Orders have issued. No privilege attaches to the communications of overseas practitioners (aside from Australian practioners). A treaty relating to privilege may assist in determining which countries New Zealand should extend privilege to.

In Netherlands, the speaker stated that privilege may not be In Netherlands, the speaker stated that privilege may not be awarded to patent attorneys, trademark attorneys and design awarded to patent attorneys, trademark attorneys and design right attorneys. In view of litigation with increased discovery-right attorneys. In view of litigation with increased discovery-like instruments available in the Netherlands and abroad, a like instruments available in the Netherlands and abroad, a WIPO treaty providing for concrete legal privilege for IP WIPO treaty providing for concrete legal privilege for IP professionals would be very welcome.professionals would be very welcome.

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Subject 8: Privilege – the perspective of Subject 8: Privilege – the perspective of companies, including those with in-house IP companies, including those with in-house IP counsel counsel For the company side, the speaker stated that a WIPO

treaty should require as the minimum standard, that each state should specify one or more classes of local advisers with whom clients locally enjoy privilege and respect the privilege in other states.

The speaker also stated that in-house IP advisers should be treated as independent IP advisers.

Subject 9: Summary of the problems and issues Subject 9: Summary of the problems and issues involved in solving the problems, from different involved in solving the problems, from different perspectivesperspectives Canadian speaker stated that the establishment of an

international treaty on Client privilege should advance the current situation further, by causing the local government to harmonize its law and rule.

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Subject 10: Prospects for improvement: Subject 10: Prospects for improvement: what are the options?what are the options? For the FICPI side, the speaker explained the content of

the FICPI resolutions in 2000 and 2003. The speaker explained that qualification should be

required for IP advisers who invoke privilege. This is because IP is a complex field where adequate level of skills and training are needed for IP professionals to properly operate. Nobody can easily improvise himself as an IP adviser.

FICPI believes that it is now urgent to take measures at an international level.

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Summary of discussions in Summary of discussions in the meeting:the meeting:

1. 1. There was a 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.

3. It is the opinion of many attendants that IP professionals whose confidential communications with their clients are privileged should be registered and authorized in one country.

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4. 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.

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.

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Future Movement in WIPO Future Movement in WIPO discussiondiscussion

Standing Committee of the Law of Patents (SCP) meeting held on June 2008 The SCP asked the WIPO Secretariat to establish

preliminary studies on four issues for next SCP meeting on March 2009.

One of the four issues is Client-Attorney Privilege. The Client-Attorney Privilege will be discussed in the

next SCP meeting in March 2009.

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Thank you !Thank you !

Kenji AsaiKenji Asai