Ottawa, Ontario, December 6, 2006
PRESENT: The Honourable Mr. Justice Phelan
BETWEEN:
ELI LILLY CANADA INC.
and
PFIZER IRELAND PHARMACEUTICALS
REASONS FOR ORDER AND ORDER
(Re: Defendant’s Appeal of Prothonotary Order)
[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.
FEDERAL COURT
NAMES OF COUNSEL AND SOLICITORS OF RECORD
DOCKET: T-341-02
STYLE OF CAUSE: LILLY ICOS LLC and
ELI LILLY CANADA INC.
and
PFIZER IRELAND PHARMACEUTICALS
PLACE OF HEARING: Toronto, Ontario
DATE OF HEARING: May 29 and 30, 2006
APPEARANCES:
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Mr. Donald Cameron Ms. Josée Gravelle
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Ms. Christine M. Pallotta Mr. Christopher G. Tortorice
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FOR THE DEFENDANT
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SOLICITORS OF RECORD:
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OGILVY RENAULT LLP Barristers & Solicitors Toronto, Ontario
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BERESKIN & PARR Barristers & Solicitors Toronto, Ontario |