Smithkline Beecham Plc & Anor v Apotex Europe Ltd & Ors

Results generated and disclosed solely for the purposes of existing proceedings fall within the use restriction in CPR 31.22. They may be used only for those proceedings unless a recognised exception applies, including agreement or court permission.

A confidentiality agreement governing material supplied by one party does not, without clear words, confer a unilateral right on that party to use resulting test data without restriction. Where the parties reasonably proceeded on the basis of equal restraint, the court may direct that the results are not disclosed or used outside the proceedings. A fresh confidentiality agreement is unnecessary where the procedural rule provides adequate protection.

The claimants brought patent infringement proceedings concerning paroxetine hydrochloride anhydrate. Before and during the proceedings, the defendants supplied samples for testing under confidentiality undertakings. The claimants then supplied the defendants with results obtained from testing those samples.

The parties disputed whether the defendants could use the results freely, including in related foreign proceedings, or whether the results were subject to CPR 31.22. The claimants applied to vary the confidentiality undertakings to restrain such use.

1. The confidentiality agreement, construed as a whole, imposed restrictions on material and data supplied by the defendants. It did not confer on the defendants a right to use freely the results of tests carried out by the claimants. The deleted draft clauses which would have created such a right were significant in construing the agreement.
2. CPR 31.22 applied to the test results. The tests were conducted and the results collected after the proceedings had commenced, and the results had been disclosed in the proceedings. Accordingly, the results could be used only for the purposes of those proceedings, subject to the exceptions in CPR 31.22.
3. The court rejected an unequal regime under which the claimants would remain restrained while the defendants could use helpful results without restriction. The results had been generated solely for the English proceedings, in circumstances where equal restraint was reasonably contemplated.
4. It was unnecessary to redraft the existing confidentiality undertakings. It was sufficient to direct that the results were to be treated as falling within CPR 31.22 and were not to be disclosed or used outside the proceedings, save by agreement of the parties or order of the court. Permission for external use was not granted.

The judgment records that an appeal was pending from interlocutory relief granted by Jacob J, but this was a first-instance decision on the confidentiality application.