Key Points:
If an expert takes notes and then uses them to prepare
an affidavit or expert's report, legal professional privilege
in those notes is likely to be waived. Redacting or masking
documents will not always be an effective strategy.
A recent Federal Court decision serves as a reminder about the
need to take care when dealing with experts (Bristol-Myers Squibb
Company v Apotex Pty Ltd (No 3) [2012] FCA 1310).
How the expert's notes came in
existence
Bristol-Myers Squibb (BMS) has sued Apotex in the Federal Court
alleging that Apotex has infringed BMS' patent covering an
antipsychotic agent. Apotex cross-claimed against BMS, alleging
that BMS' patent was invalid.
One of the pieces of prior art relied upon by Apotex in its
invalidity action is a European patent. Apotex alleges that, if one
performed one of the examples in the European patent (Example 1),
the resultant product would be one that is claimed in certain
claims of BMS' patent. As such,
