Oxford Gene Technology Ltd. v Affymetrix Inc & Ors [2000] EWCA Civ 253 (23 November 2000)

Oxford Gene Technology Ltd. v Affymetrix Inc & Ors [2000] EWCA Civ 253 (23 November 2000)

OGT did not waive privilege in the documents disclosed to Affymetrix's English lawyers because the disclosure was limited, confidential, and not to an adversary. There is no obligation on a patentee to waive privilege in amendment proceedings. The court's discretion under section 75 of the Patents Act 1977 is not fettered by Article 138 of the EPC. Wider disclosure was not required as privilege was not lost.

Citation
[2000] EWCA Civ 253
Parties
Claimant: Oxford Gene Technology Limited (OGT); Defendants: Affymetrix Inc and Affymetrix UK Limited
Jurisdiction
England and Wales
Judgment Date
23 November 2000
Procedural Posture
Patent Infringement and Amendment Proceedings / Appeal From Judgment of Pumfrey J
Outcome
Appeal dismissed
Legal Topics
Patent Amendment, Legal Professional Privilege, Disclosure and Inspection of Documents, Court's Discretion Under Patents Act 1977, Waiver of Privilege
Intellectual Property Law Civil Procedure Patent Amendment Legal Professional Privilege Disclosure and Inspection of Documents Court's Discretion Under Patents Act 1977 Waiver of Privilege

Case Brief

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Parties

Oxford Gene Technology Limited (OGT)

Claimant

Affymetrix Inc and Affymetrix UK Limited

Defendants

Procedural Posture

Patent Infringement and Amendment Proceedings / Appeal From Judgment of Pumfrey J

Legal Issues

  1. 1 Whether OGT waived privilege in documents disclosed to Affymetrix's English lawyers
  2. 2 Whether the court should order wider disclosure of privileged documents to Affymetrix's US lawyers and in-house counsel
  3. 3 Whether the court's discretion to allow amendment under section 75 of the Patents Act 1977 is fettered by Article 138 of the EPC

Ratio Decidendi

OGT did not waive privilege in the documents disclosed to Affymetrix's English lawyers because the disclosure was limited, confidential, and not to an adversary. There is no obligation on a patentee to waive privilege in amendment proceedings. The court's discretion under section 75 of the Patents Act 1977 is not fettered by Article 138 of the EPC. Wider disclosure was not required as privilege was not lost.

Court Disposition

Appeal dismissed

Orders

  • Declaration that the claimant has not disclosed to the defendants the documents listed in Schedule B so as to waive any privilege therein
  • Paragraphs 9 and 14 of the order of Pumfrey J of 7th August 2000 set aside