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

WHERE A patent was revoked on the basis of material which the judge had read out of court, rendering it unnecessary for the petitioner's counsel to outline the grounds of objection in open court, the hearing none the less was not a formality, and documents which had been disclosed for the purposes of the hearing were covered by Order 24, rule 14A of the Rules of the Supreme Court, and were thus in the public domain.

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.

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