Merial, Inc. v Intervet International B.V. (No 2)

Merial, Inc. sought leave to amend its notice of appeal against a decision of the Commissioner of Patents, relying on certain communications with a prospective witness, Mr Mark Pieloch. Intervet International B.V. sought disclosure of those communications, arguing that Merial's reliance on them in its application to amend and in particulars of grounds of appeal constituted a waiver of privilege. The primary issue before the court was whether the communications were subject to legal professional privilege and, if so, whether they had been waived by Merial's conduct.

The court found that the communications between Merial's representative, Mr Fisher, and Mr Pieloch were indeed protected by legal professional privilege. However, the court determined that Merial's reliance on those communications in its application to amend and in particulars of grounds of appeal constituted a waiver of privilege in relation to those specific communications. The court reasoned that by disclosing the substance of certain communications in the Fisher November 2015 Affidavit and using them to support its application to amend and in particulars of grounds of appeal, Merial had acted inconsistently with maintaining the confidentiality of the communications. This conduct amounted to a waiver of privilege in relation to the communications that were relied upon. However, the court held that the waiver did not extend to other communications between Mr Fisher and Mr Pieloch about the same subject-matter that were not relied upon in the application or particulars.

The court ordered Merial to produce the documents listed in annexure GF-41 to the affidavit of Grant William Fisher sworn 30 August 2016, and that disclosure of those documents be limited to external solicitors and counsel for the respondent and Mr Mark Pieloch.