Japanese Patent Attorney / Client Privilege Extends to U.S. Litigation

Eisai v. Dr. Reddy’s Lab., 77 USPQ2D 1854 (S.D.N.Y. 2005).

Japanese benrishi act essentially as patent agents or patent prosecution attorneys.  The question here was whether the communications between plaintiff Eisai and its benrishi could be withheld as privileged.

When determining privilege in a U.S. case based on a foreign privilege, courts generally apply some level of comity. 

Here, it was undisputed that at least some benrishi communications were privileged.  However, Dr. Reddy argued that privilege should not extend to U.S. cases because the benrishi privilege differs from U.S. privilege in a number of respects.

Despite differences in the laws, the court concluded that privilege should persist.

Since the laws of two different jurisdictions will rarely be in such accord, application of any such rule would be inconsistent with the basic notion of extending comity to foreign law

 

Comments

[Toyo Abe]

I'm a Japanese patent attorney (Benrishi). I've been interested in this issue, so it's an exciting case to me.

Although Japanese patent attorney's main work may be patent prosecution, we are also able to represent clients before the IP High Court in ex parte cases, cooperate with attorney at law in an inter parte case, and provide his/her expert opinion regarding the scope or validity of patent rights.

By the way, your blog is poplular among my Benrishi circle.