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

Report on Patents Committee Meeting

Patrick Yangoh KIM

APAA Council meeting, Oct. 21, 2008, Singapore

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Agenda

1. Opening Speech from Co-chairs2. Introduction of Members3. Singapore Group Report4. 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 photo9. Closing Remarks of Co-chairs

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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.

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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

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WIPO Watching Reports(1) – PCT WG-cont.

II. Issues to be discussed further (1) Enhancing the Value of International Search and

Preliminary Examination Under the PCT . (2) Necessity of amendment without filing demand

for international preliminary examination. (3) Availability and use of Information from a

centralized database in International Bureau. (4) Revising the Distinction Between International

and National Phases (5) Modification of Claims Fees – EPO will prepare

more detailed proposal (6) Modification of Physical Requirements of the

International Application –Colored Drawings (7) Supplement of Missing Elements and Parts

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WIPO Watching Reports (2) – 12th/SCP

12th Session of Standing Committee of the Law of Patents 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

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WIPO Watching Reports (2) – 12th/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

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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

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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

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WIPO Watching Reports (2) – 12th/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, anticompetitivemeasures, genetic resources, and the like

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WIPO Watching Reports (2) – 12th/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.

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Coffee Break

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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.

governments 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 establishing any minimum standard for recognizing and extending the confidentiality or client privilege protected in one country, to another country.

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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.

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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.

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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 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.

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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

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Discussion on Special Topics(1)-Overview-cont.

Rationale for privilegeJustice 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

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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

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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

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Discussion on Special Topics(2)-JP Experience

JP Experience presented by Ms. KonishiJP Experience presented by Ms. Konishi

Right to Refuse to Testify (Old Art. 281; New Art.197 I ) Right to Refuse to Testify (Old Art. 281; New Art.197 I ) Attorney at law and patent attorney (Attorney at law and patent attorney (benrishibenrishi) can refuse ) can refuse

to testify regarding facts that:to testify regarding facts that:(i)(i) were obtained in the course of professional duties; were obtained in the course of professional duties;

andand(ii)(ii) should be kept confidentialshould be kept confidential

Matters relating to technical secret/ trade secretMatters relating to technical secret/ trade secret

NO provision that allows to refuse to produce documents on IP NO provision that allows to refuse to produce documents on IP prepared by patent attorney (in possession by client and patent prepared by patent attorney (in possession by client and patent attorney)attorney)

In many old IP litigation cases in US, documents on IP prepared In many old IP litigation cases in US, documents on IP prepared by JP patent attorney were found NOT privileged.by JP patent attorney were found NOT privileged.

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Discussion on Special Topics(2)-JP Experience-cont.

Current Japanese Civil Code of ProcedureCurrent Japanese Civil Code of Procedure –1996 Amendment to Present–1996 Amendment to Present

Document Production (Art. 220 (4)(c),(d))Document Production (Art. 220 (4)(c),(d)) Attorney at law and patent attorney and client Attorney at law and patent attorney and client

can refuse to produce documents that contain can refuse to produce documents that contain the the «facts» «facts» under Art. 197 I(2), if the document under Art. 197 I(2), if the document is to be kept confidential.is to be kept confidential.

Client can refuse to produce documents that:Client can refuse to produce documents that:

(i)(i) contain the contain the «matters» «matters» under Art. 197 I(3); orunder Art. 197 I(3); or

(ii)(ii) Were created for sole purpose of clients’ Were created for sole purpose of clients’ use.use.

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Better Era Has Come...Better Era Has Come... –1996 Amendment to Present–1996 Amendment to Present

In many IP litigation cases in US, after consulting JP CCP on the In many IP litigation cases in US, after consulting JP CCP on the comity basis, documents on IP prepared by JP patent attorney comity basis, documents on IP prepared by JP patent attorney were found privileged.were found privileged.

VLT Corp. v. Unitrode Corp. case (D.Mass. 2000)VLT Corp. v. Unitrode Corp. case (D.Mass. 2000) Knoll Pharms. Co. v. Teva Pharms. (N.D.III. 2004)Knoll Pharms. Co. v. Teva Pharms. (N.D.III. 2004) Eisai Ltd. V. Dr. Reddy’s Laboratories case (S.D.N.Y. 2005) … Eisai Ltd. V. Dr. Reddy’s Laboratories case (S.D.N.Y. 2005) …

Scope of patent attorney’s Scope of patent attorney’s «Professional Duties»«Professional Duties»

under the Japanese Patent Attorneys Lawunder the Japanese Patent Attorneys Law Prosecution of IP vis-a-vis JPOProsecution of IP vis-a-vis JPO Advice on contracts relating to IPAdvice on contracts relating to IP Representative in IP appeal litigations (+ IP infringement Representative in IP appeal litigations (+ IP infringement

litigations as additional qualification)litigations as additional qualification) Practice on foreign IP prosecution has been newly added (2008-)Practice on foreign IP prosecution has been newly added (2008-)

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ACP in Global Filing ContextACP in Global Filing Context

More and more global filingsMore and more global filings

Many prosecutions and legal advises in many jurisdictions with Many prosecutions and legal advises in many jurisdictions with respect to substantively one inventionrespect to substantively one invention

If one patent is litigated out of many corresponding patents, what’s If one patent is litigated out of many corresponding patents, what’s gonna happen?gonna happen?

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Why we need international consensus on ACP?Why we need international consensus on ACP?

Unless ACP is admitted in every jurisdiction, once a corresponding Unless ACP is admitted in every jurisdiction, once a corresponding patent is litigated in a country with discovery, IP legal advise patent is litigated in a country with discovery, IP legal advise somewhere would be subject to production in the discovery somewhere would be subject to production in the discovery procedure.procedure.

Even in the US, decisions may vary from state to state.Even in the US, decisions may vary from state to state.

In some jurisdictions other than the US, case law rules that NO In some jurisdictions other than the US, case law rules that NO privilege is admitted for foreign IP advisor because such foreign IP privilege is admitted for foreign IP advisor because such foreign IP advisor is not locally registered…!advisor is not locally registered…!

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Baby Steps to Move ForwardBaby Steps to Move Forward

Lack of privilege poses an impediment to full and frank Lack of privilege poses an impediment to full and frank communications for clients to obtain legal advise on IP.communications for clients to obtain legal advise on IP.

International consensus to set minimum standards of International consensus to set minimum standards of ACP triggers harmonization of national laws.ACP triggers harmonization of national laws. Privilege for local IP advisorsPrivilege for local IP advisors Mutual recognition of privileges among countriesMutual recognition of privileges among countries

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Summary of Investigation

1. Common Law or Civil Law? → Civil Law 2. Does your country provide Client

Privilege? → Yes3. Title of IP professionals ? → Patent(TM)

Attorney/Agent4. Registration required ? → Yes5. Are IP Prop. Privileged ? → ?6. Do Client have Privilege ? → ?

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Resolution (Draft)

The Asian Patent Attorneys Association The Asian Patent Attorneys Association (APAA), (APAA), being broadly representative of patent attorneys being broadly representative of patent attorneys in private practice in the Asian region,in private practice in the Asian region,

passed at its 55th Council Meeting (Singapore) passed at its 55th Council Meeting (Singapore) on October 21, 2008 the following resolution:on October 21, 2008 the following resolution:

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Resolution (Draft) – cont.

1. Recognizing that intellectual property (IP) is 1. Recognizing that intellectual property (IP) is international in character and requires international in character and requires

protection in many different jurisdictions;protection in many different jurisdictions;

2.2. Recognizing that a client needs to haveRecognizing that a client needs to have

full and frank communications with full and frank communications with

domestic and/or foreign qualified IP advisersdomestic and/or foreign qualified IP advisers

in the countries where the client wishesin the countries where the client wishes

to obtain the best possible advice;to obtain the best possible advice;

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Resolution – cont.

3.3. Recognizing that confidential communications Recognizing that confidential communications between a client and its qualified IP advisers between a client and its qualified IP advisers

should be protected as the client's own rightshould 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;

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4.4. Understanding that Understanding that

confidential communicationsconfidential communications

between a client and its qualified IP advisersbetween a client and its qualified IP advisers

which are protected in one countrywhich are protected in one country

are sometimes forced to be disclosedare 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 privilegedprivileged in one country are not privileged

in another country; andin another country; and

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5. Recognizing that,

once confidential communications have been disclosed in one country, such disclosure may prejudice the client’s position in other countries;

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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

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7.7. APAA resolves that, in order to ensure full and frankAPAA resolves that, in order to ensure full and frankcommunications between a client and its qualified IPcommunications between a client and its qualified IP

advisers (whether domestic or foreign) without any risk advisers (whether domestic or foreign) without any risk of disclosure of their confidential communications, 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 minimum standards of privilege should be built so that all national legal systems should be harmonized all national legal systems should be harmonized

in such a way that such confidential communicationsin such a way that such confidential communications

can enjoy privilege internationally.can enjoy privilege internationally.

(End)

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Patrick Yangoh KIM

Thank you !!Thank you !!

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

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