Oxford Gene Technology Ltd v Affymetrix Inc

A patentee seeking post-grant amendment must disclose the material facts relevant to the stated reason for amendment, but is not required to waive legal professional privilege or disclose privileged documents. The duty of good faith is not a hidden obligation to waive privilege.

Whether privilege has been waived depends on justice and fairness. Disclosure to solicitors on terms that they will not disclose the documents to their clients or others may remain confidential and may not amount to waiver.

The court may restrict disclosure to professional advisers in exceptional cases, but a party should ordinarily know the facts on which the case will be decided. The discretion under section 75 of the Patents Act 1977 may refuse amendments intended to validate an invalid patent and is not constrained by Article 138 of the European Patent Convention.

Oxford Gene Technology Ltd sought to amend a European patent in infringement and revocation proceedings against Affymetrix. Following an order for disclosure of documents relevant to the court’s discretion under section 75 of the Patents Act 1977, Oxford disclosed a list of documents while objecting to inspection except by Affymetrix’s UK solicitors and counsel.

Affymetrix sought wider disclosure to its officers, in-house patent counsel and United States lawyers. Pumfrey J held that privilege had been lost, refused wider disclosure and restricted use of the documents to the amendment proceedings. Oxford appealed by respondent’s notice, and Affymetrix appealed the restrictions. The central issues were whether privilege had been waived, whether Article 138 of the European Patent Convention constrained section 75, and whether wider disclosure or use restrictions were justified.

1. Appeal dismissed. The documents in Schedule B remained privileged. Oxford had not disclosed them to its adversary. The list and correspondence showed an attempt to permit confidential inspection by named lawyers, subject to no further disclosure. The proposed arrangement was never accepted, and the exploratory inspection did not amount to waiver.
2. The duty of utmost good faith in amendment proceedings requires a patentee to place before the court the material facts relevant to the reason advanced for amendment. It does not require a general trawl through documents or disclosure of privileged communications. A patentee may waive privilege if that best advances its case, but the decision belongs to the patentee.
3. Whether privilege has been waived is determined by justice and fairness. Limited disclosure for a particular purpose may preserve privilege. The court should not draw an adverse inference merely because privilege is maintained.
4. Article 138 did not require the amendments to be allowed. Section 63 and Article 138(2) concern a patent partly valid as granted, whereas section 75 permits amendment to validate an otherwise invalid patent. Refusing amendment therefore did not itself create an additional ground of revocation. If the patent was partly valid and infringed, relief could still be available under section 63.
5. The court nevertheless considered the alternative disclosure issue. The normal rule is that a party should know the facts disclosed to its advisers, subject to exceptional protection for trade secrets or highly technical information. The restriction imposed by Pumfrey J would have been difficult to operate because amendment and validity were interrelated. The court also considered the restriction of use undesirable, but these issues did not arise after the finding that privilege had not been waived.
6. Declaration made that Oxford had not disclosed the Schedule B documents so as to waive privilege. Paragraphs 9 and 14 of Pumfrey J’s order were set aside. No order as to costs; permission to appeal to the House of Lords refused.

• Court of Appeal (Civil Division)—The appeal from the judgment of Pumfrey J dated 1 August 2000 was dismissed. A declaration was made that the Schedule B documents had not been disclosed so as to waive privilege.