Thursday Law Report: 15 July 1999 - Documents were in the public domain
SmithKline Beecham Biologicals SA v Connaught Laboratories Inc Court of Appeal (Lord Bingham of Cornhill, Chief Justice, Lord Justice Otton and Lord Justice Robert Walker) 7 July 1999
The Court of Appeal allowed the petitioner's appeal against a decision that it was not entitled to use in foreign opposition proceedings material disclosed in English revocation proceedings.
The petitioner lodged a petition to revoke a European patent held by the respondent on grounds of anticipation, obviousness and insufficiency of description. The parties lodged with the court a reading guide which invited the judge to read the patent in suit, the skeleton arguments, the particulars of objection, a number of specified documents and witness statements, and the expert reports. Two days were set aside as pre-reading days for the judge. On the afternoon of the second day the respondent indicated its intention to surrender the patent.
When the parties appeared before the judge, he observed that he had read all of the material placed before him. Counsel for the petitioner then applied for revocation under section 72 of the Patents Act 1977, and the judge, having recorded the fact that the respondent wished to surrender its patent, took the view that revocation was the proper course for him to take.
Thereafter the petitioner, in reliance on RSC Order 24, rule 14A, applied to the court seeking, inter alia, a declaration that it was free to use certain documents for the purpose of foreign opposition proceedings, contending that the documents had been read to or by the court, or referred to in open court, and were thus in the public domain. The judge held that there had been no contested oral hearing, and that accordingly the documents did not fall within rule 14A. The petitioner appealed.
Andrew Waugh QC and Adrian Speck (Stringer Saul) for the petitioner; Roger Henderson QC and Daniel Alexander (Herbert Smith) for the respondent.
Lord Bingham CJ said that it was no longer the practice for counsel to read documents aloud in open court or to lead the judge, document by document, through the evidence. The practice was, instead, to invite the judge to familiarise himself with material out of court to which, in open court, economical reference falling far short of verbatim citation was made.
Rule 14A applied even though a document was not read in open court if it had been pre-read by the court and referred to by counsel in a skeleton argument which was incorporated in submissions in open court, or if the document had been referred to (even though not read aloud) by counsel or by the court.
In the present case, if the petitioner had accepted the respondent's offer to surrender the patent, and the judge had dismissed the petition on that basis, the implied obligation binding on the petitioner would not have ceased to apply under rule 14A, no matter what materials had been delivered to the judge before the hearing, and no matter how much of it he had read and how carefully. The documents would neither have been read to or by the court in open court nor have been referred to in open court.
However, the petitioner had refused the offer and had asked for revocation. If the judge had come into court without familiarising himself with the case at all, it would have been necessary for the petitioner's counsel to outline the grounds of objection and to draw the judge's attention, however briefly, to the material relied on to support them. The hearing would undoubtedly have been very much shorter than a fully contested hearing, but it would not have been a formality. The documents were, accordingly, covered by Ord 24, r 14A, and the court did not order that they should not be disclosed.
Ray Davies' Sunny Afternoon scoops the most awardsTheatre
Grace DentChannel 4 show proves there's no app for happiness
Arts & Ents blogs
- 1 Rarest Beanie Baby of them all could be sold for £62,500 on eBay
- 2 Ben Affleck asked TV chiefs to hide slave-owning ancestry, new hacked Sony emails published by Wikileaks claim
- 3 Driving while dehydrated can be just as dangerous as drink driving, study suggests
- 4 Farmer told to tear down mock-Tudor castle after hiding construction behind hay bales
- 5 One Direction: Louis Tomlinson launching his own record label, has already 'signed two acts'
Better Call Saul creator Peter Gould on the creative concerns of a prequel, season 2 and the mind-numbing realities of the small courts
Britain's Got Talent 2015: RSPCA investigating Marc Metral's miming dog after cruelty complaints
One Direction: Louis Tomlinson launching his own record label, has already 'signed two acts'
Tidal CEO leaves Jay Z's music streaming service only a month after it launched
Star Wars 7: The Force Awakens: Luke Skywalker actor Mark Hamill admits he was suspicious of 'Star Trek guy' JJ Abrams
If I’m being racially abused I don’t need a stranger with a saviour complex to rescue me
The only black face in the Ukip manifesto is on the page about overseas aid
Ukip is the only main political party to not address LGBT rights in its manifesto
Food banks: One million Britons will soon be using them, according to Trussell Trust
Religion isn't growing, it is becoming vigorous in its demise, says philosopher AC Grayling
BBC election debate: The one photo that summed up the whole 90-minute leaders debate