Alphapharm Pty Ltd and Commissioner of Patents

[2012] AATA 521

[2012] AATA 521 

Division	GENERAL ADMINISTRATIVE DIVISION
File Number(s)	2011/2518
Re	ALPHAPHARM PTY LTD
APPLICANT
And	COMMISSIONER OF PATENTS
RESPONDENT
And	H. LUNDBECK A/S
OTHER PARTY

DECISION

Tribunal	The Hon. Brian Tamberlin, QC, Deputy President
Date	7 August 2012
Place	Sydney

The claim of privilege is upheld and access to the documents is refused.

.............[sgd]...........................................................

The Hon. Brian Tamberlin, QC, Deputy President

CATCHWORDS

PRACTICE AND PROCEDURE – privilege – legal professional privilege – waiver – claim for privilege upheld

CASES

Baker v Campbell (1983) 153 CLR 52

Osland v Secretary, Department of Justice (2008) 234 CLR 275

REASONS FOR DECISION

The Hon. Brian Tamberlin, QC, Deputy President

7 August 2012

1. By summons issued on 18 May 2012 H Lundbeck A/S (Lundbeck) sought production by Alphapharm Pty Ltd of the following documents:

   (a)All communications and documents dated between 1 July 2005 and 16 June 2009 recording internal discussions relating to or consideration of Lundbeck seeking or considering seeking an extension of time in which to file an extension of term application for Australian patent 623144 based on the registration of Cipramil on the Australian Register or Therapeutic Goods.

   (b)Legal advice dated between 1 July 2005 and 16 June 2009 in relation to Lundbeck seeking or considering seeking the Extension of Time Application including legal advice in relation to section 223(9) of the Patents Act 1990; and

   (c)Legal advice in relation to the form of orders following the Full Court’s decision referred to in paragraph 17 of the witness statement of Kim Anne O’Connell dated 8 March 2012.

2. Since the summons was issued the dates specified in paragraphs (a) and (b) have been amended to shorten the relevant period to 2 February 2009 to 16 June 2009.  It is common ground that there are no documents within paragraph (c).

3. It is also common ground that the documents produced are the subject of legal professional privilege.

4. The question is whether access should be granted to the documents produced on the ground there has been implied or imputed waiver of privilege by Alphapharm.

5. The underlying policy of privilege covering legal advice is to protect the freedom of consultation generally between lawyer and client on the basis that a person should be entitled to seek and obtain legal advice without the apprehension of being prejudiced by subsequent disclosure of confidential communications: see Osland v Secretary, Department of Justice (2008) 234 CLR 275 at [35].

6. The question in the present case is one of fact and degree in circumstances where it is said there has been disclosure or partial disclosure.  The courts ask whether the party claiming privilege was seeking to deploy disclosure of the legal advice for forensic or other advantage and whether there is an inconsistency which the courts perceive, informed by consideration to fairness, between the conduct of the client maintaining confidentiality and the use sought to be made of it.  The focus is on inconsistency of conduct.  When a court is determining if there has been an inconsistency of conduct considerations of fairness may also be relevant: British American Tobacco Australia Ltd v Secretary, Department of Health and Ageing (2011) 195 FCR 123 at [42].

   SUBMISSION

7. Lundbeck submits that privilege has been waived in the present case because there has been disclosure or part disclosure and use made of inferred legal advice and communications for the purpose of obtaining an advantage for Alphapharm.  There is, it is submitted, a clear inconsistency between seeking to rely on legal advice to make good its case that it has been prejudiced by Lundbeck’s delay where the full contents of that advice are not disclosed to Lundbeck.

8. Lundbeck has referred to evidence adduced by Alphapharm from Mr Stephen Fraser, particularly in paragraphs 8(h), 9, 17 of his statement dated 20 March 2012.  Mr Fraser states that if Lundbeck had applied for an extension of time application at an earlier point Alphapharm may have made different choices in the way it conducted the extension of term case in the courts and that Alphapharm may have had different options available to it to minimise the commercial risk of launching after the expiry of the initial patent term if Lundbeck had filed an extension of time application earlier.  It may have changed the way it conducted the Federal Court proceedings.  Mr Fraser says that Ms O’Connell, Alphapharm’s solicitor in the proceedings, informed him that Lundbeck could have made an application for an extension of time at any time since Alphapharm first raised the issue of the basis for the extension of the term of the patent but that Lundbeck did not do so until the last possible moment.  He also says, at paragraph 17, that if he had been told of Lundbeck’s intention to file an extension of time application, when the form of orders was being settled before Justice Emmett on 12 June 2009 he may have given Counsel different instructions, for example, to oppose the stay more strongly.

9. In addition, Alphapharm seeks to rely of the witness statement of Ms O’Connell.  At paragraphs 19 to 42 of her statement she recites the history in relation to Lundbeck’s delay and intervening events up to the making of final orders by the Full Court in response to submissions made on 12 June 2009.  At paragraphs 41 and 42 Ms O’Connell states that if Lundbeck’s counsel had informed the parties or the court that Lundbeck intended to file an application for an extension of time in which to file an application for an extension of term that fact may have influenced the arguments in relation as to whether the stay should be granted.  She also stated that had she been aware of Lundbeck’s intentions she may have given different advice in relation to the form of orders sought following from the Full Court’s decision, and in particular in relation to the form of undertaking Lundbeck was required to give in support of the stay of removal of the extension of term from the Register of Patents.

   REASONING

10. On the material before me I am not persuaded that there has been a waiver by Alphapharm of any or all of its privilege in the documents produced.

11. Firstly, I am not satisfied that there has been any disclosure of the content or substance of any legal advice.  There is simply an assertion that Alphapharm may have acted differently if it had known of Lundbeck’s intention.  In the evidence and statements relied on by Lundbeck to support its argument that there has been a waiver there is no reference to or disclosure of any specific legal advice or its substance.

12. Secondly, it has not been established that there is any inconsistency, and/or element of unfairness, on the part of Alphapharm or its agents, in using or deploying the context of the inferred legal advice for the purpose of gaining a forensic or other advantage for Alphapharm.  Even if there had been disclosure, it is not sufficient as a matter of fact and degree to amount to an implied waiver or a waiver imputed by operation of law.  The assertion of Alphapharm is not such as would be inconsistent with the maintenance of the confidentiality which the privilege is intended to protect.

13. There is a strong public interest element in preserving confidentiality in this case as it encourages the effective administration of justice by facilitating the representation of clients by legal advisers, and this encourages full and frank disclosure to legal advisers: Baker v Campbell (1983) 153 CLR 52 at 113-117.

14. Having regard to the above considerations, I am satisfied that nothing in the statements relied on is sufficient to reach a conclusion that there has been any express, implied or imputed waiver in the present case.

15. Accordingly, I uphold the claim of privilege by Alphapharm and refuse access to the documents.

I certify that the preceding 15 (fifteen) paragraphs are a true copy of the reasons for the decision herein of the Hon. Brian Tamberlin QC, Deputy President

....[sgd]....................................................................

Associate

Dated 7 August 2012

Date of hearing	1 August 2012
Counsel for the Applicant	Mr C Dimitriadis and Ms S Ross
Solicitors for the Applicant	King & Wood Mallesons
Solicitors for the Respondent	No appearance
Counsel for the Other Party	Ms K Howard SC
Solicitors for the Other Party	Corrs Chambers Westgarth