attorney-client privilege in japan
DESCRIPTION
Closed Meeting between CIPA and JPAA November 5, 2012TRANSCRIPT
HEIWA INTERNATIONAL PATENT
Closed Meeting between CIPA and JPAANovember 5, 2012
Koji Hirayama
JPAA International Activities Center
Attorney-Client Privilege in Japan
Copyright © 2012 HEIWA INTERNATIONAL PATENT All Rights Reserved
Contents
2
• What is Attorney-Client Privilege?
• Attorney-Client Privilege in Japan
• Approaches to Foreign Privilege
• Experience before US courts
• Road to ACP Legislation
• International Solution
• Short Summary
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• The client’s right to refuse to disclose and to prevent any other person from disclosing confidential communication between the client and the attorney – Black’s Law Dictionary
– The attorney-client privilege functions “to encourage full and frank communication between attorneys and their clients.”
United States v. Zolin, 491 U.S. 554, 562 (1989).
– The attorney-client privilege “exists to protect not only the giving of professional advice to those who can act on it but also the giving of information to the lawyer to enable him to give sound and informed advice.”
Upjohn Co. v. United States, 449 U.S. 383, 390 (1981).
What is Attorney-Client Privilege?
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Attorney-Client Privilege in Japan
• Is there “ACP” in Japan?
• No “common law” discovery system
• No ACP per se
• Japanese patent attorneys have no serious problem before Japanese courts
• However, Japanese patent attorneys may be subjected to forcible disclosure in litigation before “common law” discovery countries– Australia, Canada, India, Malaysia, New Zealand, United Kingdom,
United States of America…
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Approaches to Foreign Privilege
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• Common law countries take different approaches to decide whether foreign patent attorneys’ privilege is recognized
• “Choice of law” rules – US
• Case-by-case decisions leave unpredictability
• Deny foreign privilege categorically – CA, UK
• What can open the door?
• Extend privilege to foreign patent attorneys – AU, NZ
• Favorable approach!!
• Only a single instance of privilege denied breaches “confidentiality through the world”
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Experience before US courts
• US courts look to “whether privilege applies to Japanese patent attorneys under the law of Japan”
• Code of Civil Procedure prescribes:
• Right to refuse to testify (Article 197(1)(ii))
• 1998-revision introduced:
• Right to refuse to produce document (Article 220(4)(c))
• Whether Japanese “secrecy obligation” is comparable to US ACP?
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• Before 1998-revision
• Privilege to Japanese patent attorney denied– Alpex Computer Corp. v. Nintendo Co., 1992 U.S. Dist. LEXIS 3129 (S.D. N.Y.
1992)
– Santrade Ltd. v. General Elec. Co., 150 F.R.D. 539 (E.D. NC. 1993)
• After 1998-revision
• Privilege to Japanese patent attorney recognized– VLT Corp. v. Unitrode Corp., 194 F.R.D. 8 (D. Mass. 2000)
– Knoll Pharms. Co. v. Teva Pharms. USA, Inc., 2004 U.S. Dist. LEXIS 24057 (N.D. Ill. 2004)
– Murata Mfg., Co. v. Bel Fuse Inc., 2005 U.S. Dist. LEXIS 37774 (N.D. Ill. 2005)
– Eisai Ltd. v. Dr. Reddy’s Labs., Inc., 406 F.Supp.2d 341 (S.D. N.Y. 2005)
• Privilege denied due to “sanction”– In re Rivastigmine Patent Litig., 237 F.R.D. 69 (S.D. N.Y. 2006)
Experience before US courts (cont’d)
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Road to ACP Legis ｌ ation
JPAA’s Regular Activities
• Information gathering
• Discussion with foreign professional bodies
• Attendance at WIPO SCP meetings
2012 March
• JPAA finalized the list of items (including ACP legislation) desired for next revision of “Patent Attorneys Act”
2011
• JPAA’s Special Committee on Revision of “Patent Attorneys Act”
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Road to ACP Legis ｌ ation (cont’d)
2014 Ordinary Session of the Diet
• Revision of Patent Attorneys Act
• ACP provision will be legislated??
2013
• Industrial Structure Council of METI will discuss what revision should be advanced
• Lobbying and foreign pressure may influence on revision
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International Solution
WIPO SCP - 18th sessionMay 21 to 25, 2012
Non-supporting States Supporting States
Algeria for DAG, Argentina, Brazil, China, Djibouti, Egypt for Africa, India, Indonesia, Iran, South Africa
Australia, Czech, Denmark for EU, France, Germany, Hungary for CEBS, Japan, Korea, Poland, Portugal, Romania, Russia, Spain, Switzerland, United States for Group B
* categorized by the presenter based on the minutes of the session
A matter of private law belonging to national jurisdiction
Harmonization of ACP would violate the sovereign authority of a country
No need to be on the agenda
Recognize importance of ACP issue Necessary to further study the issue of a
minimum international standard A soft law approach should be considered
Many NGOs support
AIPPI, APAA, FICPI, ICC, IPIC, JPAA, etc.
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Short Summary
• Only a single instance of privilege denied breaches “a chain of confidentiality through the world”
• Need for establishing a solution to the cross-border issue of ACP at the international level
• “JPAA would like to work together with CIPA in any possible ways for realizing the cross-border protection of ACP”
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Thank you for your attention !
Koji HirayamaHEIWA INTERNATIONAL [email protected]