In the United States lawsuit, there is a discovery procedure (Discovery), and you must disclose information related to the case to the other party unless it is protected by confidentiality privileges. Therefore, it is important to protect unfavorable information with confidential privileges.

1. Information Protected by Confidentiality Communication between a US lawyer and a client may be protected by confidentiality for the purpose of seeking legal advice and, if confidentiality is maintained. I)

Communication between Japanese patent attorneys and clients may also be covered by confidentiality privileges if they are related to Japanese law. However, if the communication with the Japanese attorney relates to the United States (touch base with the US), the privilege of concealment does not extend. Golden Trade (SDNY 1992), VLT Corp (DC Mass. 2000) For example, there is no confidentiality privilege in the communication between Japanese companies and Japanese patent attorneys regarding US patent applications and patent litigation. Astra (SDNY 2002)

2. Examples of information that cannot be protected by confidentiality privileges (1) Examples that can be used to prove intentional infringement (1) The Japanese patent attorney investigates whether there is a US patent that infringes the product under development and does not consult with a US lawyer. "We found a US patent that could be infringing," he said. (2) The US patent application of the competitor cited in the reason for refusal (OA) was already patented. A Japanese patent attorney, who was consulted as to whether the product would infringe the patent, reported that there was a high risk of infringement without consulting with a US lawyer.

(2) Examples that can be used to prove IDS violations Since the part quoted in Japan for reasons of refusal was close to the US claim, the Japanese Patent Attorney recommended that the translation be submitted to the USPTO, but Japanese companies did not I instructed the Japanese Patent Attorney to submit only the Abstract.

(3) Examples that can be used to prove abuse of rights (burden of partner lawyer's expense) When responding to a US OA, the Japanese Patent Attorney said, "Feature A is disclosed in Reference B of the Japanese application. Even if you get a patent in, the patent will be invalidated later." This comment was not passed on to a US lawyer and the claim was scaled down in Feature A. He then exercised his rights, but citation B determined that the patent was invalid.

3. Privileged description in emails and reports Even if ATTORNEY-CLIENT PRIVILEGED COMMUNICATION is described in emails and reports, confidential privileges do not work unless the requirements in 1 are met. However, if it is written in this way, it will be easier to separate documents for which confidential privileges work, and it will be easier to prevent accidentally giving them to the other party. However, please note that if the above description is added to a sentence for which confidentiality privilege does not work, it will not be useful for separating the sentences. For example, examples of documents with the description of PRIVILEGED include comments from US lawyers when preparing specifications for US applications and comments from US lawyers regarding reasons for rejection (OA).

4. How to protect with confidentiality privilege Even if a Japanese company and a Japanese patent attorney communicate, (1) the communication is for legal advice by a US lawyer, (2) confidentiality is maintained, and (3) the United States. If you are under the supervision, direction and control of a lawyer, you have the privilege of concealing with a US lawyer. It is therefore important to include US lawyers in your communications and meet these requirements. i)

RYUKA has five US lawyers (two of which belong to RYUKA USA LLP). Therefore, if necessary, communication with customers can be protected with confidential privileges. However, in addition to the US lawyer being formally included in the e-mail address and CC, it is necessary for the business to proceed substantially under the control of the US lawyer. To do this, the information needed to make a decision must also be properly communicated to US lawyers.

Information that is protected by confidentiality includes information that can have a large impact on the outcome of a lawsuit. In order to properly understand and effectively use confidential privileges, it is necessary to pay close attention to meet the requirements explained in this paper.