Bristol-Myers Squibb Company v Baker Norton Pharmaceuticals Inc and Napro Biotherapeutics Inc

The slip rule permits a court to correct a drawn order where it fails to give effect to the court’s original intention. It does not permit the court to have second or additional thoughts, or to decide after judgment an issue that was not raised when the order was made.

An unintended legal consequence does not prevent correction where it results from wording that did not reflect the decision made. The appropriate correction may preserve unchallenged parts of a lower court’s order while varying only the part which the appellate court intended to alter.

Bristol-Myers Squibb Company, the patent proprietor, had failed in its appeal against the invalidity of its patent. The defendants’ cross-appeal on costs had succeeded. In the earlier Court of Appeal decision, reported at [2001] RPC 1, the court set aside the whole of Jacob J’s costs order and substituted an order for the defendants’ costs to be assessed.

The defendants applied to amend that order. They contended that the court had intended only to remove the restriction limiting recovery to one set of costs. Setting aside the whole order had also removed their accrued entitlement to interest on costs. The issue was whether the order could be corrected under the slip rule.

Application allowed unanimously. Aldous LJ, with whom Laws LJ and Blackburne J agreed, held that the Court of Appeal’s order should be amended.

1. The slip rule in rule 40.12 of the Civil Procedure Rules distinguishes between correction and reconsideration. It cannot be used to give the court second or additional thoughts after an order has been drawn. A decision which was intended when made, but is later seen to be erroneous, must ordinarily be challenged on appeal. The rule can, however, correct an order which does not express the court’s intention when it made its decision.

2. The court treated Adam & Harvey Ltd v International Maritime Supplies Co. Ltd [1967] 1 WLR 445 and Mutual Shipping Corporation v Bayshore Shipping Co. [1985] 1 Lloyd’s LR 189 as establishing that distinction. The observations in Molnlycke AB v Proctor and Gamble Ltd [1993] FSR 154 did not prevent correction, since they were obiter and would likely have been differently expressed if those authorities had been cited.

3. Rule 40.8 could not be used to make a fresh retrospective order for interest. That issue had not been raised when the earlier order was made, so such an order would amount to impermissible second thoughts. It was different to correcting the form of the existing order so that it achieved the intended variation.

4. Only the restriction on the defendants’ recovery of costs had been challenged on the cross-appeal. The court had intended to remove that restriction, not to disturb the defendants’ general entitlement to costs under Jacob J’s order. Setting aside the whole costs order therefore failed to reflect that intention and accidentally deprived the defendants of accrued interest. The order of 23 May 2000 was amended accordingly. Each party was to bear its own costs of the application.

• Court of Appeal (Civil Division): This application was allowed. The court amended its order of 23 May 2000 so that it varied, rather than wholly set aside, the relevant part of Jacob J’s costs order: [2001] EWCA Civ 414.
• Court of Appeal (Civil Division): The earlier appeal against invalidity was dismissed and the defendants’ cross-appeal on costs was allowed: [2001] RPC 1.
• Chancery Division: Jacob J held the patent invalid and made a costs order which, after 6 February 1998, generally restricted the defendants to one set of recoverable costs.