DISCLOSURE IN PATENT CASES

Another of the tranche of cases decided by the Court of Appeal on Wednesday (30 July), this time of a more procedural nature. Smithkline Beecham v Generics and BASF v Smithkline Beecham arose out of three separate attempts to have Smithkline’s patent for paroxetine hydrochloride anhydrate revoked. The first set of proceedings against Generics was settled. However, there were certain documents disclosed by Generics that Smithkline wished to use in the second and third sets of proceedings involving BASF and Apotex respectively. Generics did not want Smithkline to make use of those documents and applied for an order under Civil Procedure Rule 31.22 prohibiting their disclosure which the first instance judge granted and which was effective for both the second and the third sets of proceedings (CPR 31.22 states that a party to whom a document has been disclosed may only use it for the set of proceedings in which it has been disclosed except where the document has been read to or by the court at a hearing that has been held in public and even then the court may order that it should not be used, the court gives permission or where the parties agree).

The Court of Appeal held that while the judge was right to make the order concerning the second set of proceedings, he should have allowed the documents to be used in the third set of proceedings. With regard to the second set of proceedings the judge was right to base his decision on the interests of the public and the third parties with which the documents originated (they had been compiled by independent experts) and the requirement to do justice. Thus he was correct to come to the conclusion that it was not necessary for the documents to be disclosed. However, in the third set of proceedings there was a real argument that the documents had to be made available in order to allow the claim to be fairly disposed of. This factor would enable them to be discoverable under CPR 31.17 and made disclosure necessary in the interests of justice, albeit with a relevant order to protect the interests of the owners of the documents. A further quirk was that the judge who was hearing the third set of proceedings had already been exposed to the documents in one of the earlier sets of proceedings and so could well have been influenced by them, unconsciously at least.