Date: 20061206
Docket: T-341-02
Citation: 2006
FC 1465
Ottawa, Ontario, December 6, 2006
PRESENT: The Honourable Mr. Justice Phelan
BETWEEN:
LILLY ICOS LLC and
ELI LILLY CANADA INC.
Plaintiffs
and
PFIZER IRELAND PHARMACEUTICALS
Defendant
REASONS FOR ORDER AND ORDER
(Re: Defendant’s Appeal of Prothonotary Order)
I. INTRODUCTION
[1]
This is
one of three appeals of Prothonotary decisions heard at regular motions
sittings. This appeal relates to the issue of “privileged” communication
between inventors and U.K. patent agents and whether such
privilege applies or ought to apply in this litigation.
II. BACKGROUND
[2]
In this
action the Plaintiff (Lilly) seeks to impeach the Defendant’s (Pfizer) Canadian
Patent No. 2,163,446 for what is known as the Cialis drug. At the examination
for discovery Pfizer refused to answer questions seeking disclosure and
production of communications between the inventors and their U.K. patent agents on the basis that those
communications were privileged in the U.K. and that that privilege should be
recognized in Canada.
[3]
Lilly
brought a motion to compel Pfizer to answer those questions (among others). By
Order of March 6, 2006, Prothonotary Lafrenière ordered that these questions be
answered. This is the appeal of that Order by Pfizer.
[4]
Prothonotary
Lafrenière found that Pfizer had failed to establish that privilege attaches to
the communications between the inventors and their U.K. patent agents in respect of this
litigation. He further found that Pfizer had failed to establish on the
evidence that the communications ought to be protected under the four-prong
Wigmore test dealing with confidential communications. (Evidence in Trials
at Common Law, Vol. I, MacNaughton Revision, paragraph 2285)
III. ANALYSIS
A. Standard of
Review
[5]
There are
two issues in this appeal: does the U.K.
legislation apply (or ought it to be applied as a matter of comity) to exclude
this evidence; and should the evidence be included on the basis that it is
confidential as envisaged by the Wigmore test.
[6]
Prothonotary
Lafrenière’s conclusion is one of law. There is no issue between the parties,
and I concur, that the standard of review in respect of this decision is
correctness. (See Canada v. Aqua-Gem Investments Ltd.
(C.A.),
[1993] 2 FC 425)
B. U.K. Privilege
[7]
The U.K. legislation creating the alleged
privilege is s. 280 of the Copyright, Designs and Patents Act 1988 which
reads as follows:
280.—(1) This section applies to communications as to any
matter relating to the protection of any invention, design, technical
information, trade mark or service mark, or as to any matter involving passing
off.
(2) Any such communication—
(a) between a person and
his patent agent, or
(b) for the purpose of
obtaining, or in response to a request for, information which a person is seeking
for the purpose of instructing his patent agent,
is privileged from disclosure in legal proceedings in
England, Wales or Northern Ireland in the same way as a communication between a
person and his solicitor or, as the case may be, a communication for the
purpose of obtaining, or in response to a request for, information which a
person seeks for the purpose of instructing his solicitor.
(3) In subsection (2) "patent agent" means—
(a) a registered patent
agent or a person who is on the European list,
(b) a partnership entitled
to describe itself as a firm of patent agents or as a firm carrying on the
business of a European patent attorney, or
(c) a body corporate
entitled to describe itself as a patent agent or as a company carrying on the
business of a European patent attorney.
(4) It is hereby declared that in Scotland the rules of law
which confer privilege from disclosure in legal proceedings in respect of
communications extend to such communications as are mentioned in this section.
[8]
Pfizer
relies on a number of U.S. authorities in support of its
proposition that comity requires that Canadian courts accept the U.K. privilege. In particular, Pfizer relies
on the case of SmithKline Beecham v. Apotex, 2000 U.S. Dist. LEXIS 13607
(N.D. III. 2000) wherein the U.S. District Court held that a magistrates
judge’s holding, that certain U.K. documents were privileged under the U.K.
statute, was “not clearly erroneous or contrary to law”.
[9]
In the SmithKline
decision, the U.S. District Court recognized that communication with U.S. domestic patent agents was not subject
to the “attorney-client” privilege. However, the U.S. District Court held that to
deny such privilege in that case would vitiate the principles of comity and
predictability based on the functions such agents serve in their native system
or the expectations created under their local law.
[10]
The U.K. statute enjoys an anachronistic status
in Canadian law under the Canada Evidence Act s. 17 wherein an Imperial statute
is not treated as a foreign law to be proven as a fact. That status, however,
does not incorporate the U.K. law into Canadian law and, in
this case, creates a privilege not recognized by Canadian law. The law in this
country does not recognize this patent agent–client privilege and there is no
reason to create such a privilege on an ad hoc basis.
[11]
Judicial
comity between countries does not require Canada to recognize a privilege not
established in Canada. This is so particularly for
a privilege which has been advocated for but never adopted by legislation.
[12]
Even if
the U.S. decision were to be adopted, which, with great respect I am not
prepared to do, there is no evidence put forward by Pfizer as to the functions
served by the patent agents in this case or the expectations created by local
law. The U.S. District Court was evidently persuaded by evidence that the U.K. patent agents were “more or less
functioning as attorneys” (see p. 74 of decision).
[13]
Prothonotary
Lafrenière described the U.K. statutory privilege as one
limited to legal proceedings in England, Wales, Northern Ireland and Scotland. He describes it as an
evidentiary rule which does not create an absolute privilege or purport to
prohibit disclosure in other jurisdictions. I concur with Prothonotary
Lafrenière’s conclusion. It is instructive that this “privilege” does not extend
to Crown dependencies close to the United Kingdom such as the Channel Islands or the Isle of Man. This
evidences a legislative intent to put strict geographic limitations on the
“privilege”.
[14]
There is
no evidence of the role played by the patent agents nor is there evidence of
their expectation of privilege. In the face of the clear wording of the
legislation, it would be difficult, absent strong evidence, to conclude that
there was an expectation that the privilege would be enforceable in
jurisdictions other than England, Wales, Northern Ireland and Scotland.
[15]
I cannot
see how an argument of comity can be made out in the face of the absence of a
similar type of privilege in Canada and the very specific limitations imposed
on the territorial reach of the U.K.
legislation.
[16]
Pfizer
chose to market their products in Canada
and therefore take both the benefits and burdens of the Canadian legal regime
when they sue or are sued in this country.
C. Wigmore/Confidential
Communication
[17]
What is
sometimes referred to as the Wigmore Test is not the creation of a privilege
but the articulation of a principle under which certain information will be
recognised as confidential and which will be protected from disclosure in some
manner, either wholly or partially or upon terms of a court order.
[18]
The
Wigmore Test requires consideration of four components:
·
the
communication must originate in confidence that it will not be disclosed;
·
this
element of confidentiality must be essential to the full and satisfactory
maintenance of the relations between the party;
·
the
relations must be one which in the opinion of the community ought to be
seditiously fostered; and
·
the injury
that would incur to the relations by the disclosure of the communications must
be greater than the benefit thereby gained for the correct disposal of
litigation.
[19]
The
criteria under the Wigmore Test is established, at least in part, on a factual
record addressing the four points.
[20]
Prothonotary
Lafrenière was correct in concluding that he would not revisit the issue of
patent agent privilege in a factual vacuum. This is particularly true in
respect of the first two criteria which require evidence of the circumstances
of the communication, and the nature of the relations between those parties
including potentially their expectations as to the nature and scope of any
limitation on disclosure.
[21]
There is
no evidence upon which to ground this claim of confidentiality.
IV CONCLUSION
[22]
For these
reasons, this appeal of Prothonotary Lafrenière’s decision of March 6, 2006 on
this issue is dismissed with costs in any event of the cause.
ORDER
IT IS ORDERED THAT the appeal of Prothonotary
Lafrenière’s decision of March 6, 2006 on this issue is dismissed with costs in
any event of the cause.
“Michael
L. Phelan”
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