FEDERAL COURT OF AUSTRALIA Eli Lilly & Company v Pfizer Ireland Pharmaceuticals (No 2) [2004] FCA 850 INTELLECTUAL PROPERTY – privilege of registered patent attorneys – whether extending to communications with patent attorneys not registered in Australia WORDS AND PHRASES – "registered patent attorney" Patents Act 1990 (Cth), s 200(2) Federal Court Rules O 33 r 12 Wilden Pump Engineering Co v Funfeld [1985] FSR 159 at 168 applied Pfizer Pty Ltd v Warner Lambert Pty Ltd (1989) 24 FCR 47 applied Kennedy v Wallace [2004] FCA 332 at [57] referred to ELI LILLY AND COMPANY & ORS V PFIZER IRELAND PHARMACEUTICALS & ANOR (No 2) V604 OF 2002 HEEREY J 30 JUNE 2004 MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY V604 OF 2002 BETWEEN: ELI LILLY AND COMPANY FIRST APPLICANT/FIRST CROSS-RESPONDENT ELI LILLY AUSTRALIA PTY LTD (ACN 000 233 992) SECOND APPLICANT/SECOND CROSS-RESPONDENT ELI LILLY AND COMPANY LIMITED THIRD APPLICANT/THIRD CROSS-RESPONDENT AND: PFIZER IRELAND PHARMACEUTICALS FIRST RESPONDENT/FIRST CROSS-CLAIMANT PFIZER PTY LIMITED (ACN 008 422 348) SECOND RESPONDENT/SECOND CROSS-CLAIMANT JUDGE: HEEREY J DATE OF ORDER: 30 JUNE 2004 WHERE MADE: MELBOURNE THE COURT ORDERS THAT: 1. The respondents/ cross-claimants produce to the applicants/ cross-respondents the documents identified as items 1 and 2 in the Notice to Produce dated 24 June 2004 2. The respondents/ cross-claimants pay the applicants/ cross-respondents' costs of today's hearing. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY V604 OF 2002 BETWEEN: ELI LILLY AND COMPANY FIRST APPLICANT/FIRST CROSS-RESPONDENT ELI LILLY AUSTRALIA PTY LTD (ACN 000 233 992) SECOND APPLICANT/SECOND CROSS-RESPONDENT ELI LILLY AND COMPANY LIMITED THIRD APPLICANT/THIRD CROSS-RESPONDENT AND: PFIZER IRELAND PHARMACEUTICALS FIRST RESPONDENT/FIRST CROSS-CLAIMANT PFIZER PTY LIMITED (ACN 008 422 348) SECOND RESPONDENT/SECOND CROSS-CLAIMANT JUDGE: HEEREY J DATE: 30 JUNE 2004 PLACE: MELBOURNE REASONS FOR JUDGMENT 1 The applicants/cross-respondents Eli Lilly and Company and Eli Lilly Australia Pty Ltd (collectively Lilly) have given a notice to produce under O 33 r 12 of the Federal Court Rules requiring production of the following documents which have been discovered by the respondents/cross-claimants Pfizer Ireland Pharmaceuticals and Pfizer Pty Limited (collectively Pfizer): "1. Document entitled 'Record of inventorship UK Patent Application No 9311920.4' (identified in the Respondent's discovery as PIP.3229.0001) from N.Terett and P. Ellis dated 22 June 1993; 2. Document entitled 'Request for Patent Application – The use of cGMP PDE inhibitors for impotence' (identified in the Respondent's discovery as PIP.3229.0002) dated 18 January 1993;" 2 Pfizer has resisted production on the basis that the documents were brought into existence for the dominant purpose of obtaining advice from its in-house patent attorneys in the United Kingdom. In the course of argument senior counsel also relied on what he said was a "cloak of confidentiality analogous to privilege". 3 Section 200(2) of the Patents Act 1990 (Cth) (the Act) provides: "(2) A communication between a registered patent attorney and the attorney's client in intellectual property matters, and any record or document made for the purposes of such a communication, are privileged to the same extent as a communication between a solicitor and his or her client." 4 Section 200 is in Pt 1 of Ch 20 headed "Patent Attorneys". Part 1 deals with registration. Part 2 provides for various offences such as practicing as a patent attorney without being registered. The Dictionary in Sch 1 to the Act defines "registered patent attorney" to mean "a person registered as a patent attorney under this Act". 5 It is common ground that the persons referred to in the documents in question are not registered under the Act. 6 At common law communications with patent attorneys are not protected by any privilege analogous to legal professional privilege: Wilden Pump Engineering Co v Funfeld [1985] FSR 159 at 168. That authority has other importance for present purposes. The English Court of Appeal was dealing with s 104 of the Patents Act 1977 (UK) which conferred privilege on any communication involving patent attorneys made for the purpose of proceedings before the Comptroller of Patents or the Patents Appeal Tribunal. The defendants claimed privilege for all communications with their patent attorneys in relation to the manufacture of the pumps in question. It was conceded the communications went beyond the terms of s 104. Dillon LJ, with whom the other members of the court agreed, said (at 168): "But it seems to me that it would be quite impossible for this court, in the face of that limited grant of privilege by Parliament, to hold that there exists a much wider, general privilege covering the advice of patent agents to their clients on matters of law – not even limited to matters arising under the Patents Act." 7 In Pfizer Pty Ltd v Warner Lambert Pty Ltd (1989) 24 FCR 47 Gummow J held that the equivalent provision to s 200(2) in the 1952 Patents Act did not extend to documents recording the results of searches and enquiries. Presumably the introduction into s 200(2) in the 1990 Act of the expression "and any record or document made for the purposes of such a communication" was as a result of that decision. In any event, Pfizer is consistent with the approach in Wilden Pump; to qualify for the privilege documents must fit within the language of the statute. 8 The language of s 200(2) is clear. The privilege is confined to communications with patent attorneys registered as such in Australia. Further, there is no apparent policy reason why Parliament is to be taken to have intended the privilege to extend to communications with any patent attorney anywhere in the world. The requirements for registration in Australia set out in s 198(4) includes residence in Australia, qualification as prescribed by regulations (which would presumably stipulate knowledge of relevant Australian law and practice), employment for a prescribed period and good fame, integrity and character. The drafters must be taken to have had such persons in mind when they used the expression "registered patent attorney". 9 In Kennedy v Wallace [2004] FCA 332 at [57] Gyles J thought it was "far from axiomatic" that legal professional privilege extended to foreign lawyers. There is even less justification for extending privilege to foreign patent attorneys when the privilege for Australian patent attorneys rests solely on a circumscribed statutory footing. 10 By the same token, and applying the reasons in Wilden Pump, the language of s 200(2) leaves no room for an extended analogous protection of confidentiality. Confidentiality of itself is not a ground for privilege. 11 Senior counsel for Pfizer said that the documents when created were privileged in the United Kingdom and that it would be anomalous if Lily could destroy that privilege simply by issuing proceedings in Australia. He did not suggest of course that the prospect of destroying privilege in these documents in fact motivated Lilly's commencement of proceedings. The documents were not discovered until long after the proceedings were commenced. But in any event, when Lilly commenced proceedings in Australia, and when Pfizer filed a cross-claim, they did so on the basis that Australian law, including the law as to privilege, would apply. Australian law in that regard might be more, or less, favourable to the litigants than law in the United Kingdom or other countries. The result of applying s 200(2) according to its terms is in no way anomalous. In terms of Australian privilege there was no destruction as none was ever created. 12 There will be orders that the respondents/cross-claimants produce the documents to the applicants/cross-respondents identified as items 1 and 2 in the notice to produce dated 24 June 2004 and that the respondents/cross-claimants pay the costs of today's hearing. I certify that the preceding twelve (12) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Heerey. Associate: Dated: 30 June 2004 Counsel for the Applicant: D Catterns QC and K Howard Solicitor for the Applicant: Blake Dawson Waldron Counsel for the Respondent: D Shavin QC and H Rofe Solicitor for the Respondent: Corrs Chambers Westgarth Date of Hearing: 30 June 2004 Date of Judgment: 30 June 2004