On December 6, 2006, the Federal Court issued its decision in Lilly Icos LLC et al. v. Pfizer Ireland Pharmaceuticals (2006 FC 1465). In this action, the plaintiff, Lilly Icos (Lilly), sought to impeach Pfizer Ireland Pharmaceuticals’ (Pfizer) Canadian patent for the drug marketed under the name Cialis.

The decision arose because 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. Pfizer argued that those communications were privileged in the U.K., and that the privilege should be recognized in Canada.

On a motion brought by Lilly, Prothonotary Lafrenière found that Pfizer had failed to establish that privilege attaches to such communications in the context of Canadian litigation. Furthermore, the prothonotary would not revisit the issue of patent agent privilege in the absence of an adequate evidentiary record to determine whether or not the communications ought to be protected under the Wigmore Test. The Wigmore Test requires a consideration of four issues to determine whether information will be recognized as confidential and protected from disclosure. These are: (i) did the communication originate in confidence that it will not be disclosed; (ii) is the element of confidentiality essential to the full and satisfactory maintenance of the relations between the party; (iii) are the relations such that the opinion of the community believes they should be fostered; and (iv) would the injury that would incur to the relations by the disclosure of the communications be greater than the benefit thereby gained for the correct disposal of litigation.

The Federal Court addressed these two issues and upheld Prothonotary Lafrenière’s decision. The Court stated that judicial comity between countries does not require Canada to recognize a privilege not established in Canada. In particular, it noted that a patent agent privilege had been advocated for but never adopted by legislation. The Court upheld the prothonotary’s conclusion that the U.K. statutory privilege was an evidentiary rule with a strict territorial limitation that did not create an absolute privilege or purport to prohibit disclosure in other jurisdictions.