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WHERE A patent was revoked on the basis of material which the judge had read out of court, rendering it unnecessary for the petitioner's counsel to outline the grounds of objection in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.

Arts and Entertainment
Beyonce, Boris Johnson, Putin, Nigel Farage, Russell Brand and Andy Murray all get the Spitting Image treatment from Newzoids
tvReview: The sketches need to be very short and very sharp as puppets are not intrinsically funny
Arts and Entertainment
Despite the controversy it caused, Mile Cyrus' 'Wrecking Ball' video won multiple awards
musicPoll reveals over 70% of the British public believe sexually explicit music videos should get ratings
Have you tried new the Independent Digital Edition apps?
Arts and Entertainment

ebooksNow available in paperback
Arts and Entertainment

ebooks
Arts and Entertainment
Lena Headey as Cersei Lannister and Ian Beattie as Meryn Trant in the fifth season of Game of Thrones

TV
Arts and Entertainment

book review
Arts and Entertainment
It's all in the genes: John Simm working in tandem with David Threlfall in 'Code of a Killer'

TV review
Arts and Entertainment
Far Right and Proud: Reggies Yates' Extreme Russia

TV review
Arts and Entertainment
Kanye West was mobbed in Armenia after jumping into a lake

music
Arts and Entertainment
The show suffers from its own appeal, being so good as to create an appetite in its viewers that is difficult to sate in a ten episode series

Game of Thrones reviewFirst look at season five contains some spoilers
Arts and Entertainment
Judi Dench and Kevin Spacey on the Red Carpet for 2015's Olivier Awards

Ray Davies' Sunny Afternoon scoops the most awards

Theatre
Arts and Entertainment
Proving his metal: Ross Poldark (played by Aidan Turner in the BBC series) epitomises the risk-taking spirit of 18th-century mine owners

Poldark review
Arts and Entertainment
Eddie Redmayne is reportedly favourite to play Newt Scamander in Fantastic Beasts and Where to Find Them

film
Arts and Entertainment
Tom Hardy stars in dystopian action thriller Mad Max: Fury Road

film
Arts and Entertainment
Josh, 22, made his first million from the game MinoMonsters

Grace Dent

Channel 4 show proves there's no app for happiness
News
Disgraced Top Gear presenter Jeremy Clarkson
people
Arts and Entertainment
Game face: Zoë Kravitz, Bruce Greenwood and Ethan Hawke in ‘Good Kill’

film review

Arts and Entertainment
Living like there’s no tomorrow: Jon Hamm as Don Draper in the final season of ‘Mad Men’

TV review

  • Get to the point
Latest stories from i100
Have you tried new the Independent Digital Edition apps?

ES Rentals

    Independent Dating
    and  

    By clicking 'Search' you
    are agreeing to our
    Terms of Use.

    NHS struggling to monitor the safety and efficacy of its services outsourced to private providers

    Who's monitoring the outsourced NHS services?

    A report finds that private firms are not being properly assessed for their quality of care
    Zac Goldsmith: 'I'll trigger a by-election over Heathrow'

    Zac Goldsmith: 'I'll trigger a by-election over Heathrow'

    The Tory MP said he did not want to stand again unless his party's manifesto ruled out a third runway. But he's doing so. Watch this space
    How do Greek voters feel about Syriza's backtracking on its anti-austerity pledge?

    How do Greeks feel about Syriza?

    Five voters from different backgrounds tell us what they expect from Syriza's charismatic leader Alexis Tsipras
    From Iraq to Libya and Syria: The wars that come back to haunt us

    The wars that come back to haunt us

    David Cameron should not escape blame for his role in conflicts that are still raging, argues Patrick Cockburn
    Sam Baker and Lauren Laverne: Too busy to surf? Head to The Pool

    Too busy to surf? Head to The Pool

    A new website is trying to declutter the internet to help busy women. Holly Williams meets the founders
    Heston Blumenthal to cook up a spice odyssey for British astronaut manning the International Space Station

    UK's Major Tum to blast off on a spice odyssey

    Nothing but the best for British astronaut as chef Heston Blumenthal cooks up his rations
    John Harrison's 'longitude' clock sets new record - 300 years on

    ‘Longitude’ clock sets new record - 300 years on

    Greenwich horologists celebrate as it keeps to within a second of real time over a 100-day test
    Fears in the US of being outgunned in the vital propaganda wars by Russia, China - and even Isis - have prompted a rethink on overseas broadcasters

    Let the propaganda wars begin - again

    'Accurate, objective, comprehensive': that was Voice of America's creed, but now its masters want it to promote US policy, reports Rupert Cornwell
    Why Japan's incredible long-distance runners will never win the London Marathon

    Japan's incredible long-distance runners

    Every year, Japanese long-distance runners post some of the world's fastest times – yet, come next weekend, not a single elite competitor from the country will be at the London Marathon
    Why does Tom Drury remain the greatest writer you've never heard of?

    Tom Drury: The quiet American

    His debut was considered one of the finest novels of the past 50 years, and he is every bit the equal of his contemporaries, Jonathan Franzen, Dave Eggers and David Foster Wallace
    You should judge a person by how they peel a potato

    You should judge a person by how they peel a potato

    Dave Hax's domestic tips are reminiscent of George Orwell's tea routine. The world might need revolution, but we like to sweat the small stuff, says DJ Taylor
    Beige is back: The drab car colours of the 1970s are proving popular again

    Beige to the future

    Flares and flounce are back on catwalks but a revival in ’70s car paintjobs was a stack-heeled step too far – until now
    Bill Granger recipes: Our chef's dishes highlight the delicate essence of fresh cheeses

    Bill Granger cooks with fresh cheeses

    More delicate on the palate, milder, fresh cheeses can also be kinder to the waistline
    Aston Villa vs Liverpool: 'This FA Cup run has been wonderful,' says veteran Shay Given

    Shay Given: 'This FA Cup run has been wonderful'

    The Villa keeper has been overlooked for a long time and has unhappy memories of the national stadium – but he is savouring his chance to play at Wembley
    Timeless drama of Championship race in league of its own - Michael Calvin

    Michael Calvin's Last Word

    Timeless drama of Championship race in league of its own