Eli Lilly & Company v Pfizer Ireland Pharmaceuticals (No 2) [2004] FCA 850

Eli Lilly & Company v Pfizer Ireland Pharmaceuticals (No 2) [2004] FCA 850

Privilege under s 200(2) of the Patents Act 1990 (Cth) is limited to communications with patent attorneys registered in Australia and does not extend to foreign patent attorneys or analogous confidentiality protections. Accordingly, the identified documents must be produced.

Parties
First Applicant/first Cross Respondent: Eli Lilly and Company; Second Applicant/second Cross Respondent: Eli Lilly Australia Pty Ltd (ACN 000 233 992); Third Applicant/third Cross Respondent: Eli Lilly and Company Limited; First Respondent/first Cross Claimant: Pfizer Ireland Pharmaceuticals; Second Respondent/second Cross Claimant: Pfizer Pty Limited (ACN 008 422 348)
Jurisdiction
Australia
Judgment Date
30 June 2004
Procedural Posture
Intellectual Property / Interlocutory Application Regarding Privilege and Production of Documents
Outcome
Application granted
Legal Topics
Patent Attorney Privilege, Production of Documents, Patent Law Interpretation
Intellectual Property Patent Attorney Privilege Production of Documents Patent Law Interpretation

Case Brief

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Parties

Eli Lilly and Company

First Applicant/first Cross Respondent

Eli Lilly Australia Pty Ltd (ACN 000 233 992)

Second Applicant/second Cross Respondent

Eli Lilly and Company Limited

Third Applicant/third Cross Respondent

Pfizer Ireland Pharmaceuticals

First Respondent/first Cross Claimant

Pfizer Pty Limited (ACN 008 422 348)

Second Respondent/second Cross Claimant

Procedural Posture

Intellectual Property / Interlocutory Application Regarding Privilege and Production of Documents

Legal Issues

  1. 1 Whether the privilege of registered patent attorneys under s 200(2) of the Patents Act 1990 (Cth) extends to communications with patent attorneys not registered in Australia
  2. 2 Whether confidentiality is analogous to privilege for the purposes of production of documents

Ratio Decidendi

Privilege under s 200(2) of the Patents Act 1990 (Cth) is limited to communications with patent attorneys registered in Australia and does not extend to foreign patent attorneys or analogous confidentiality protections. Accordingly, the identified documents must be produced.

Court Disposition

Application granted

Orders

  • The respondents/cross-claimants produce to the applicants/cross-respondents the documents identified as items 1 and 2 in the Notice to Produce dated 24 June 2004
  • The respondents/cross-claimants pay the applicants/cross-respondents' costs of today's hearing