International Journal of Intellectual Property Law, Economy and Management 1 (2005) 59–63

Japanese Patent Attorney-Client Privilege
Sadaaki Kambara
Japan Patent Attorney Association

1. Introduction
Under the general provisions of Rule 261 in the Federal
Rules of Civil Procedure, which provides a typicalcharacteristic for civil patent lawsuits in the UnitedStates, discoverable information is exempt from disclosure to the other party if the relevant communication is privileged. One well-known privilege, having
its roots in the Federal Common Law,2 is the attorneyclient privilege.
In the United States, the attorney-client privilege
usually applies to the attorneys at law and their subordinates, and only protects clients seeking legal advice
or legal services from such people. So there is a question of whether the privilege should be applicable to
U.S. patent agents,3 or, if it is intended to include, nonU.S. attorneys at law or patent attorneys or agents having bases abroad. The answers to these questions will
eventually be given on a case-by-case basis by the
U.S. courthouses, but in this paper I would like tofocus on the Japanese patent attorney-client relationship in light of some U.S. court decisions that have so
far been made.
A remarkable report4 written on a similar theme by
U.S. Attorney Yoichiro Yamaguchi has helped me withthis examination.

2. The Japanese Patent Attorney’s Position
in a U.S. DiscoveryProcedure for Patent
Litigation
Worldwide free trade policies based on the WTO
Agreements or the like have made the circulation of
goods and services borderless. To ensure continuous
prosperity one has to maintain the industry’s international competitiveness by developing new and usefultechnology, make improvements on the productionlines, and add more value to the goods and services

ISSN 1349-7723© 2005 IPAJ All rights reserved.

sold in the marketplace. To this end, it is extremely
important for intellectual properties to be patented andlicensed appropriately, regardless of the country one
may be in. In Japan, a pro-intellectual property policy
has been adopted and various implementations havealready been set in motion.
As intellectual property increases in importance andinternational trade becomes more active, the clients ofJapanese patent attorneys — majority of them being
Japanese corporations — will have to expand theirpatent activities not only in Japan but also in othercountries such as the United States. Accompanying
this movement will be the numerous communications
between Japanese patent attorneys and their clients in
respect to patent application, licensing, and infringement issues; such communications, mostly in written
forms, are not usually intended for disclosure to a third
party.
In a U.S. patent litigation the discovery process canbe quite extensive, and when a U.S. court finds a certain document relevant in ascertaining the annulment,
infringement, or non-infringement of a patent, it will
become mandatory for the holder of such documents
to make them available to the other party. As mentioned above, Japanese patent attorney-client communications are normally confidential, so if this situation
occurs, the clients will probably incur serious damages
through the imparting of corporate secrets, and theJapanese patent attorneys themselves will be set backin their businesses. This slowdown in the routine activities of Japanese corporations will eventually result ina negative impact on the Japanese industries.
Therefore, to keep clients exempt from disclosing
discoverable information, the U.S. courts should adopt
usually such a system in the discovery process ofpatent litigation that will place a Japanese patent attorney-client privilege in the same category as an attorney-client privilege.

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S. Kambara

3. Decisions of U.S. Courts
3.1. Conception Common to Judicial Precedents
To this day, a number of reports5 have been made that
illustrate the various positions of U.S. courts on thequestion of whether an attorney-client privilege should
apply for Japanese patent attorneys and their clients.
The most common factor in some of the leading
court decisions, which seems to be the basis for
upholding or denying the privilege on communications
between Japanese patent attorneys and their clients, isthe concept of interstate comity. To accept comity is topay due respect to the other country’s laws and rules.
The most prominent case in which the U.S. court
denied the attorney-client privilege for a Japanese
patent attorney is the Alpex case (1992).6 The New
York Southern District Court in this case did not classify the information that passed between the Japanese
patent attorney and his client permissible for protection. On the other hand, in the VLT case (2000),7 theMassachusetts District Court held similar communications as privileged information and adopted the attorney-client privilege in favor of Japanese patent attorneys and their clients.
3.2. The Alpex Case
The decision of the U.S. court in the Alpex case wasmade in accordance with the provisions of the oldJapanese Code of Civil Procedure, which was in effectbefore the revision of the Code in 1996.
Whether the relevant communications were privileged or not depended on how the Japanese laws handled the attorney-client privilege for patent attorneys.
If the laws precluded the privilege, then, under thecomity rule, the U.S. court would have to adopt theattorney-client privilege principle to protect theJapanese patent attorney-client communications. But
as the privilege was not stipulated clearly in the statutory law it was hard to assume that the Japanese courts
would act beyond the law to protect their patent attorneys, so the U.S. court ordered the disclosure of the
documents that were in question. Correspondingly, thepatent attorney offered a counterargument that in fact
there was a provision for the patent attorney privilege
in article 281 of the old Japanese Code of Civil
Procedure. To this, the U.S. court dismissed the argument by stating that article 281 only gives the patent
attorney a right to reject testimony under certain circumstances and the law should not be stretched toinclude protection by privilege.
After this Alpex judgement was entered, the New
York Southern District Court and the North Carolina

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Eastern District Court followed suit by denying attorney-client privileges in the Novamont (1992) 8 andSantrade (1993)9 cases, respectively.
3.3. The VLT Case
The decision of the VLT case was made in light of theprovisions of the current Japanese Code of Civil
Procedure (revised in1996), which was put into effecton January 1, 1998.
In this litigation the Massachusetts District Court
followed the criteria set by the New York Southern
District Court in the Golden Trade lawsuit (1992),10 inwhich all communications having a “touching base” inthe United States were to be subjected to the Federal
Rules of Civil Procedure, whereas communications
related to only foreign matters should be ruled by thestatutory law of the relevant country. Therefore, as
there were no U.S. touching bases for the communication documents between the Japanese patent attorney
and his client, and because Japan was holding the mostdirect interest in this matter, it was decided that theJapanese laws would prevail in the discovery procedure. The court judged that since the communication
between the relevant Japanese patent attorney and hisclient is protected under Japanese statute their documents should also be protected in the United States bya privilege similar to that of an attorney-client privilege.
With regard to this decision and taking into mind theJapanese patent attorney’s functions — i.e., prosecuting patent applications to the Japan Patent Office, giving legal advice on infringement and validity lawsuits
based on Japanese Patent Law, sending letters of warning to possible infringers, and representing clients incourt for patent procedures — the U.S. court came tobelieve that the letter sent from U.S. attorney David
Feigenbaum to Japanese patent attorney Fujimura(“Feigenbaum letter”) was indeed protected under theJapanese law. Furthermore, the revised Japanese Codeof Civil Procedure, which was amended to ensure consistency with the flexible U.S. discovery procedure,
listed the types of documents that were non-repudiable(Art. 220), and it was clear to the U.S. court that the
documents exchanged between the Japanese patent
attorneys and their clients were exempt from disclosure.
The explanation in the last sentence of the above
paragraph seems to be based on an inaccurate understanding of the new Japanese Code of Civil Procedure,and one11 of the aforementioned reports5 illustrating thevarious positions of the U.S. courts on the question of
the Japanese patent attorney-client privilege, has beenJapanese Patent Attorney-Client Privilege

written with a similar perspective.

4. Privilege on Communications between
Japanese Patent Attorneys and Clients(1) From the above discussion, it can be summarizedthat the privilege on the communications between theJapanese patent attorneys and their clients in a U.S.
discovery procedure will depend on the manner inwhich those communications are privileged inJapanese law.
Here, to be privileged by Japanese law means thatthe relevant documents, in order to be relieved of theirproduction in court, must fall under the categories listed in Article 220 (1) (iv) (A)–(E) of the new Code ofCivil Procedure.
(2) After the VLT decision there is an optimistic view,as seen in one of the reports made by the committee of
the Japan Patent Attorneys Association, that theJapanese patent attorney-client privilege, under the
new Japanese Code of Civil Procedure, will now be
more admissible in the U.S. discovery procedures.
However, It would be inappropriate to overvalue the
VLT decision or to take things too favorably in thismanner.
(3) In the VLT case, the admission of the Feigenbaum
letter as privileged information was based on the U.S.
court’s belief that this matter should be governed by
the relevant Japanese law, and the confidential communications exchanged between the Japanese patent
attorneys and their clients were deemed similar to thatof U.S. attorney-client privileges under Article 220 (1)(iv) of the Japanese Code of Civil Procedure. But it isin this evaluation of Article 220 by the U.S. court that
we see an underlying problem that cannot be overlooked.
(4) In the following paragraphs I will discuss thisproblem in detail.
(4-1) Article 220 (1) (iv) of the new Japanese Code ofCivil Procedure does not bear the criteria of universality that defines the non-application of the mandatory
production of documents exchanged between theJapanese patent attorneys and their clients, but stipulates with specific conditions the non-repudiable documents of the holder thereof.
The provisions related to patent attorneys and theirclients in Article 220 (1) (iv) of the new Code of Civil
Procedures provides as follows:
1) Article 220 (1) (iv) (C)A holder of the following documents may refuse
their production in court:(a) Documents of facts described in Article 197 (1) (ii)[facts that attorneys or patent attorneys may haveaccess to in the performance of their duties], which
are not exempted from confidentiality obligation;and(b) Documents of matters provided in Article 197 (1)(ii) [matters of secrecy related to technology or
trade], which are not exempted from confidentiality
obligation.
2) Article 220 (1) (iv) (D)A holder of the following documents may refuse
their production in court:(c) Documents that are solely for the use of the holder
thereof.
(4-2) In light of the above statute, the following issues
may be pointed out in regard to the VLT decision, in
which the Feigenbaum letter was deemed as privileged
information under Article 220 (1) (iv).
(i) Firstly, we must consider the fact that this U.S.
court decision was made to accommodate the
Feigenbaum letter in particular and was notintended to encompass documents exchanged
between Japanese patent attorneys and theirclients in general, which means that there is no
guarantee that other documents will receive thesame treatment.
(ii) Secondly, the Feigenbaum letter decision was a
result of a rough approximation based mainly on
the deposition of the plaintiff (VLT Corporation
and Vicor Corporation), and there is no indicationthat Article 220 (1) (iv) was examined at length indetermining the letter’s relevance.
(iii) Therefore, there is now a possibility that the documents exchanged between the Japanese patent
attorneys and their clients will be deemed irrelevant after being examined in detail against cases(C) and (D) in Article 220 (1) (iv), and thereby
not permissible for protection under attorneyclient privilege.

5. Desirable Actions in JapanTo eliminate the possibility of such uncertain interpretations, the Japanese laws should define with moreclarity the cases in which the documents exchanged
between the Japanese patent attorneys and their clientsare exempted from disclosure.
In this chapter I will describe the current situation of
the exemption clauses in Japanese laws in relation topatent attorneys, and will propose the desirable actions
that should be taken in Japan.
(1) The basic idea
During the pretrial and trial proceedings, both the61

S. Kambara

patent attorney’s documents placed in service for theirclients (including electronic data files) and the communication documents exchanged between theJapanese patent attorneys and their clients should beclassified in the statute (e.g., the Patent Attorney Law)
as documents exempted from disclosure.
(2) The need to exempt the disclosure obligation forJapanese patent attorney-client communications(2-1) In dealing with intellectual property litigation,e.g., patent infringement lawsuits, Japanese patent
attorneys will normally evaluate the validity of the relevant rights, determine whether a certain product iswithin the claims of the patented invention, and passtheir judgement on the relevant infringement activities.
All of these appraisals, reports, or opinions will besummarized in documents addressed to their clients.
So compared with the other areas of an infringement
lawsuit, the pretrial communications between thepatent attorney and client, as well as in the trail proceedings, can be quite intensive.
(2-2) Such documents and communications exchanged
between Japanese patent attorneys and their clients
may, in some cases, be revised and submitted to a third
party, but otherwise they are not intended for disclosure to others. Consequently, if these documents arepresented as infringement evidences, against the willof the holder thereof, not only will the clients suffer
huge losses but the patent attorneys will also experience setbacks in their practices.
(2-3) To minimize the above losses and setbacks, thegeneral rules of document production was stipulated in
Article 220 of the new Code of Civil Procedure, where
the exemption cases of communication between thepatent attorney and client is provided in clause iv as
follows:(a) Documents of facts described in Article 197 (1) (ii)[facts that attorneys or patent attorneys may haveaccess to in the performance of their duties], which
are not exempted from confidentiality obligation;and(b) Documents of matters provided in Article 197 (1)(ii) [matters of secrecy related to technology or
trade], which are not exempted from confidentiality
obligation. (Art. 220 (1) (iv) (C))(c) Documents that are solely for the use of the holder
thereof. (Art. 220 (1) (iv) (D))
However, as there are many types of documents going
between patent attorneys and clients, and because it isunclear in which category — (a), (b), or (c) — they
will be placed, each document will need to be judged
on a case-by-case basis. Furthermore, Article 220 iseffective for document presentation at the trail pro-62

ceedings, but is not directly functional in the pretrial
stages.
(2-4) For the purpose of enhancing the pretrial evidence collection procedure, the revised Japanese Codeof Civil Procedure12 will be implemented on April 1,
2004, in which the clauses for pretrial inquiries willappear in Article 132bis through Article 132novies.
The clause for pretrial inquiries, placed in Article
132bis, will disallow the pretrial document production
for inquiries itemized in Article 163, which includes
the same inquiries that can be refused in testimony
under the provisions of Article 197.
Therefore, if a document between the patent attorney
and his/her client falls in the category of (a) confidential documents of facts that attorneys or patent attorneys may have access to in the performance of theirduties, or (b) confidential documents of matters ofsecrecy related to technology or trade (Art. 197 (1)(ii)), then the relevant document will be protected fromdisclosure by the pretrial inquiry clause. However, as
stated before, there are many types of documents
exchanged between patent attorneys and their clients,
and because it is still unclear what type of document
will fall in the categories of the above (a) and (b), eachdocument will have to be judged on a case-by-casebasis.
(2-5) Article 105 of the Japanese Patent Law thatobligates the document production in patent infringement litigation also stipulates that when the holder ofthe document has a legitimate reason for refusing
he/she will be exempted from disclosure. Also in thiscase it is unclear whether the document passed
between the patent attorney and client is admissible for
exemption, so each document has to be judged independently.
(2-6) In view of the above, it should be clearly written
in the provisions of the law that communications
between Japanese patent attorneys and their clients are
exempt from disclosure during both the trial and pretrial proceedings. Such statutes will help improve thecurrent status of pretrial evidence collection, protect
the interests of clients in a patent infringement lawsuit,and maintain the trust of Japanese patent attorneys.

6. For Further Reference
The United Kingdom equivalent of the Japanese patent
attorney is the patent agent, and under the “Copyright,
Designs and Patents Act” of 1988, their privilege isstipulated in its section 280 as follows:
Section 280: Privilege for communications with patent
agentsJapanese Patent Attorney-Client Privilege

280.-(1) This section applies to communications as toany 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 arequest for, information which a person is seeking
for the purpose of instructing his patent agent, isprivileged 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 arequest for, information which a person seeks forthe purpose of instructing his solicitor.

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6

References

7

1

8

2
3

4

Rule 26: General Provisions Governing Discovery;
Duty of Disclosure.
United States v. United Shoe Machinery Corp. 89 F.
Supp. 357, 358–359, 85 USPQ 5 (D. Mass. 1950).
A patent agent is a person who is not an attorney andis admitted to practice before the United States Patent
and Trademark Office after acquiring a passing score
on its examination. The agent may prosecute patentapplications but, unlike an attorney at law, may not
represent parties in patent litigation.
Yamaguchi, Y. (Member of New York State andAmerican Bar Associations, Rader, Fishman & Grauer
PLLC), “Report on Attorney-client Privilege
Recognized in the U.S. in Connection with

9

10

11

12

Communications between Japanese Patent Attorneys
and Clients,” 2003.
Yamaguchi, Y., “Crisis to Japanese Patent Attorney
System Caused by U.S. Attorney-Client Privilege/
Proposal of Revisions to the Patent Attorney Law,” (InJapanese) Patent (Monthly magazine of JPAA), Vol.
47 No. 2 (1994).
Umeda, S.,“Attorney-Client Privilege in U.S. Patent
Litigation,” Intellectual Property Management(Journal of JIPA), Vol. 51 No. 4 (2001): 527.
Sullivan, Jeffrey D., “Means to Protect theCommunications with Japanese Patent Attorneys andAttorneys at Law from U.S. Discovery Procedures,”
AIPPI, Vol. 49 No. 2 (2004).
Alpex Computer Corp. v. Nintendo Co., Ltd. andNintendo of America Inc. 86 Civ. 1749 (KMW),LEXIS 3129 (S.D.N.Y. 1992).
VLT Corp. and Vicor Corp. v. Unitrode Corp.
194 F.R.D. 8, LEXIS 8987 (D. Mass. 2000).
Novamont North America Inc., et al. v. WarnerLambert Co., et al.
91 Civ. 6482, LEXIS 6622 (S.D.N.Y. 1992)
Ltd. and Sandvik Special Metals Corp. v. General
Electric Co.
27 USPQ2d 1446 (E.D.N.C. 1993).
Golden Trade, S.r.L. and Greater Texas Fishing Corp.
v. Lee Apparel Co. and Blue Bell, Inc.
143 Federal Rules Decisions 514 (S.D.N.Y. 1992).
Umeda, S., “Attorney-Client Privilege in U.S. Patent
Litigation,” Intellectual Property Management(Journal of JIPA), Vol. 51 No. 4 (2001): 527.
Amendment of the Code of Civil Procedure in Japan(Law No.108 of 2003).

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