In re Rivastigmine Patent Litigation (S.D.N.Y. 2006)

Communications to Swiss Patent Agents Held Not Subject to Privilege

    By Robert Dailey --

A discovery order in the ongoing ANDA litigation over Exelon (In re Rivastigimine, No. 05-MD-1661-HB, S.D.N.Y.) held that attorney-client privilege does not attach to communications between Novartis and its Swiss patent agent.

Communications to foreign patent agents are covered by the law of the country where the application is pending.  A U.S. court, therefore, must decide whether the law of that country embodies legal protections comparable to our attorney-client privilege.  Previous holdings have found the existence such protections under the laws of Japan, for example.

Novartis argued that Swiss law protects communications to patent agents in ways that are comparable to U.S. privilege provisions.  The Swiss statutes proffered by Novartis, however, refer only to a professional secrecy obligation, and not to an absolute evidentiary privilege.  Defendants (Dr. Reddy's, Watson, and Sun) argued that the court should focus on the text of the Swiss statutes, and recognize that they create only a qualified privilege of confidentiality.

Novartis disagreed with the Defendants' interpretation of the Swiss statutes.  But Novartis offered a second argument as well, asking the court to look past the text of the Swiss statutes and consider the effects of those provisions within the context of Swiss discovery rules.  Since Swiss litigation practice permits only limited discovery, confidentiality is sufficient to protect communications between clients and their patent agents from disclosure.

This effects-based approach seems to get closer to the real question that our federal courts should be asking:  Would the communication at issue be protected under the legal practices of the foreign country?  But the text-based approach elevates form over function by focusing only on whether the foreign country has a privilege doctrine commensurate with ours.  Nevertheless, the district court adopted the Defendants' textual arguments, holding that the Swiss law would permit a court to "order disclosure if it determines that the need for the information is sufficient to outweigh the secrecy obligation."

    Click here for the magistrate judge's initial order.

    Click here for the court's opinion affirming the order.

Robert Dailey, Ph.D., is a physical chemist and a third-year law student at the University of North Carolina at Chapel Hill.  Dr. Dailey was a member of MBHB's 2006 class of summer associates.