Fujioka, Takahiro `US and Japan Sides Discussion

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
1
Contents


1. Background
2. Problems



3. Solutions (Harmonization)





Japan side
US side
First Step : PCT Reform
Second Step: Patent Law Treaty (PLT)
Final Step :Substantive PLT (SPLT)
4. Conclusion
5. Disclaimer and Author
2
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
3
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
http://www.asu.edu/counsel/brief/privilege.html
4
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.
5
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
1998.3
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
http://strategis.ic.gc.ca/sc_mrksv/cipo/con_dis/agents/disc_part3-e.html
6
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.
7
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
http://www.kenyon.com/hotip/privilege.htm
8
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.
9
2.3 Problems (US side)

Community Patent System (CPS) in Europe





CPS outline was finally agreed in 2003.
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
10
3.1 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.
11
3.1 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.
12
3.2 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.
13
4. Conclusion
Let’s do it !
14
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
th session of PCT Reform WG delegate of JPAA
 A 5
 A member of IP Reform committee of JPAA
 reached at [email protected]
15

Download Report