Apotex Pty Ltd (ACN 096 916 148) v Les Laboratoires Servier [2008] FCA 1466

Servier waived legal professional privilege because it intentionally presented Mr Hamer's affidavits and evidence as the evidence of Servier's reasons for seeking amendment of the Alpha Crystalline Patent, thereby disclosing his legal advice as the totality of its reasons. It was inconsistent with that presentation, and unfair to Apotex, for Servier to maintain confidentiality over communications between Servier and Mr Hamer concerning his opinion, Servier's instructions, the amendment application and Servier's reasons for making it. The Evidence Act 1995 (Cth) did not presently apply because the documents were sought for inspection under a notice to produce, not for immediate adducing in...

Jurisdiction: Australia
Judgment Date: 30 September 2008
Procedural Posture: Application to Amend Patent Under S 105 of the Patents Act 1990 (cth) With Notice to Produce and Claim of Legal Professional Privilege / Interlocutory Determination of Whether Privilege Had Been Waived in Relation to Documents Sought by Notice to Produce
Outcome: Servier was held to have waived privilege on the issues of Mr Hamer's reasons for seeking amendment and advice to and instructions from Servier on that subject; the parties were directed to address the scope of the waiver and further directions.
Legal Topics: ['patent Amendment Under S 105 of the Patents Act 1990 (cth)' 'notice to Produce' 'implied Waiver of Legal Professional Privilege' 'client Legal Privilege Under the Evidence Act 1995 (cth)' 'application of Common Law Privilege Principles to Pre Trial Production']

['patents' 'practice and Procedure' 'evidence' 'legal Professional Privilege'] ['patent Amendment Under S 105 of the Patents Act 1990 (cth)' 'notice to Produce' 'implied Waiver of Legal Professional Privilege' 'client Legal Privilege Under the Evidence Act 1995 (cth)' 'application of Common Law Privilege Principles to Pre Trial Production']

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 1 Authorities cited 2 Party arguments 2 Amounts and remedies 1

Procedural Posture

Application to Amend Patent Under S 105 of the Patents Act 1990 (cth) With Notice to Produce and Claim of Legal Professional Privilege / Interlocutory Determination of Whether Privilege Had Been Waived in Relation to Documents Sought by Notice to Produce

Legal Issues

1 ["Whether Servier waived legal professional privilege over documents sought by Apotex's notice to produce by relying on its solicitor's affidavits as evidence of Servier's reasons for seeking amendment of the Alpha Crystalline Patent." 'Whether the Evidence Act 1995 (Cth), including ss 118 and 122, applied to production of documents pursuant to the notice to produce at this stage.' 'Whether the scope of any waiver extended to all documents in the notice to produce.']

Ratio Decidendi

Court Disposition

Servier was held to have waived privilege on the issues of Mr Hamer's reasons for seeking amendment and advice to and instructions from Servier on that subject; the parties were directed to address the scope of the waiver and further directions.

Orders

["By 4:00 pm on 3 October 2008 each party inform the Court whether it accepts or disputes that the respondent's waiver of privilege applies to all documents in the notice to produce and, if not, to which documents it does not apply." 'By 4:00 pm on 3 October 2008 the parties propose any necessary directions for the...