Airco Fasteners Pty Ltd v Commissioner of Patents [2021] FCA 1594

Airco Fasteners Pty Ltd v Commissioner of Patents [2021] FCA 1594

Privilege was waived only for communications on 25 and 26 November 2021 because the affidavits of Ms Howard and Mr Jamieson put in issue the contents of the privileged communications, namely the substance of the issue to which they were alerted on those dates. That conduct was inconsistent with maintaining privilege over those communications, but did not waive privilege over documents created before 25 November 2021. The confined category of documents was relevant and compliance would not be unduly burdensome or oppressive.

Jurisdiction
Australia
Judgment Date
16 December 2021
Procedural Posture
Judicial Review Proceedings Concerning a Decision of the Commissioner of Patents to Allow Amendments to the 970 Patent / Notice to Produce; Ruling on Legal Professional Privilege and Waiver
Outcome
The Court ordered limited production of documents to the second respondent.
Legal Topics
['notice to Produce' 'legal Professional Privilege' 'waiver of Privilege' 'patent Amendments' 'extension of Time']
['practice and Procedure' 'intellectual Property' 'patents' 'evidence'] ['notice to Produce' 'legal Professional Privilege' 'waiver of Privilege' 'patent Amendments' 'extension of Time']

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Procedural Posture

Judicial Review Proceedings Concerning a Decision of the Commissioner of Patents to Allow Amendments to the 970 Patent / Notice to Produce; Ruling on Legal Professional Privilege and Waiver

Legal Issues

  1. 1 ["Whether documents sought by the second respondent's notice to produce were protected by legal professional privilege." 'Whether Airco waived privilege by conduct inconsistent with maintaining confidentiality in privileged communications.' 'Whether any waiver extended to communications before 25 November 2021.' 'Whether compliance with the confined notice to produce would be unduly burdensome or oppressive.']

Ratio Decidendi

Privilege was waived only for communications on 25 and 26 November 2021 because the affidavits of Ms Howard and Mr Jamieson put in issue the contents of the privileged communications, namely the substance of the issue to which they were alerted on those dates. That conduct was inconsistent with maintaining privilege over those communications, but did not waive privilege over documents created before 25 November 2021. The confined category of documents was relevant and compliance would not be unduly burdensome or oppressive.

Court Disposition

The Court ordered limited production of documents to the second respondent.

Orders

  • ['The applicant produce to the second respondent all documents produced, received or sent on 25 and 26 November 2021 by or on behalf of Airco and their current legal representatives recording or evidencing the reasons for the filing of the Applications by Airco or the issues necessitating the Applications referred...