Dr Vanessa Hill v Touchlight Genetics Limited

A scientific adviser educates the court on technical subject matter but does not resolve technical disputes or provide opinions on issues in contention. Expert evidence is the proper mechanism where significant technical disputes may arise, including in a patent entitlement dispute. The court should not appoint a scientific adviser without expert evidence unless satisfied that no significant technical issues will arise at trial. Permission for expert evidence should be sufficiently defined to address the technical aspects of the issues, while allowing the experts to identify and narrow areas of disagreement.

At a second case management conference in a patent entitlement dispute concerning biotechnology inventions, the claimant sought appointment of a scientific adviser without expert evidence. The defendants sought permission for expert evidence and opposed appointment of a scientific adviser in those circumstances.

The dispute concerned the distinction between a scientific adviser’s educational role and the role of expert evidence in addressing disputed technical matters, including the inventive concepts, alleged disclosures and scientific work undertaken during the claimant’s employment.

1. Disposition. The court refused to appoint a scientific adviser without expert evidence and granted permission for expert evidence.
2. A scientific adviser and technical expert evidence both assist the court to understand relevant technology. Their functions differ. A scientific adviser ordinarily provides a non-controversial tutorial or teach-in, usually during pre-reading, and must not address technical disputes or give opinions on issues in contention. Expert evidence addresses disputed technical matters, subject to admissibility and the requirement that it be reasonably required to resolve the proceedings.
3. The court should not appoint a scientific adviser without expert evidence unless satisfied that no technical issues of significance will arise at trial. That condition was not met. The pleadings showed that the court would need to understand the technology and inventive concepts and might have to assess disputed technical facts, including alleged oral disclosures, the context of technical documents and the reliability of recollection after a lengthy period.
4. Proceeding with a scientific adviser alone could create unfairness and practical difficulty. Technical disputes might emerge during cross-examination or from the written cases, when it would be too late to introduce expert evidence. The parties were entitled to present and challenge independent expert evidence in accordance with fair adversarial procedure.
5. Each party was given permission to call one technical expert in molecular biology on the technical aspects of Issues 2, 3 and 6, including the technology and what was disclosed in technical documents. The experts were directed under CPR r35.12 to discuss the technical issues and prepare a statement identifying matters agreed and disputed, with reasons for disagreement. The parties were permitted to agree consequential directions and to apply to the court if necessary.