The document discusses attorney-client privilege (ACP) in Japan and efforts to establish protections internationally. There is currently no ACP under Japanese law but secrecy obligations provide some protections. Japanese patent attorneys have faced disclosure requirements in foreign courts. Recent revisions and case law now generally recognize Japanese privilege in US courts. Japan's patent attorney association is lobbying for an ACP law and working with international groups like WIPO toward a minimum global standard.

1. Attorney-Client Privilege in Japan
Closed Meeting between CIPA and JPAA
November 5, 2012
Koji Hirayama
JPAA International Activities Center
HEIWA INTERNATIONAL PATENT

2. Contents
• 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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3. What is Attorney-Client Privilege?
• 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).
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4. 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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5. Approaches to Foreign Privilege
• 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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6. 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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7. Experience before US courts (cont’d)
• 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)
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8. Road to ACP Legis ｌ ation
JPAA’s Regular Activities
• Information gathering
• Discussion with foreign professional bodies
• Attendance at WIPO SCP meetings
2011
• JPAA’s Special Committee on Revision of
“Patent Attorneys Act”
2012 March
• JPAA finalized the list of items (including ACP
legislation) desired for next revision of “Patent
Attorneys Act”
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9. Road to ACP Legis ｌ ation (cont’d)
2013
• Industrial Structure Council of METI will discuss
what revision should be advanced
• Lobbying and foreign pressure may influence on
revision
2014 Ordinary Session of the Diet
• Revision of Patent Attorneys
Act
• ACP provision will be
legislated??
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10. International Solution
WIPO SCP - 18th session
May 21 to 25, 2012
Non-supporting States Supporting States
Algeria for DAG, Argentina, Brazil, Australia, Czech, Denmark for EU,
China, Djibouti, Egypt for Africa, France, Germany, Hungary for CEBS,
India, Indonesia, Iran, South Africa Japan, Korea, Poland, Portugal,
Romania, Russia, Spain, Switzerland,
United States for Group B
 A matter of private law belonging to
national jurisdiction  Recognize importance of ACP issue
 Harmonization of ACP would violate the  Necessary to further study the issue of a
sovereign authority of a country minimum international standard
 No need to be on the agenda  A soft law approach should be considered
Many NGOs support
AIPPI, APAA, FICPI, ICC, IPIC, JPAA,
etc.
* categorized by the presenter based on the minutes of the session
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11. 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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12. Thank you for your attention !
Koji Hirayama
HEIWA INTERNATIONAL PATENT
k-hira@heiwa-pat.com
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