Oxford Gene Technology Ltd. v Affymetrix Inc [2000] EWCA Civ 519 (23 November 2000)

Oxford Gene Technology Ltd. v Affymetrix Inc [2000] EWCA Civ 519 (23 November 2000)

Disclosure of privileged documents to opposing solicitors on a limited, confidential basis does not amount to a waiver of privilege; there is no obligation on a patentee to waive privilege in amendment proceedings; the court retains discretion to refuse amendment under section 75 of the Patents Act 1977, and Article 138 of the EPC does not override this discretion.

Citation
[2000] EWCA Civ 519
Parties
Claimant/respondent: Oxford Gene Technology Ltd; Defendant/appellant: Affymetrix Inc; Defendant/appellant: Affymetrix UK Ltd; Defendant/appellant: Beckman Coulter Inc
Jurisdiction
England and Wales
Judgment Date
23 November 2000
Procedural Posture
Appeal From Chancery Division (patents) / Court of Appeal Judgment
Outcome
Appeal dismissed
Legal Topics
Patent Amendment, Legal Professional Privilege, Disclosure Obligations, Waiver of Privilege, Discretionary Powers of the Court
Intellectual Property Civil Procedure Patent Amendment Legal Professional Privilege Disclosure Obligations Waiver of Privilege Discretionary Powers of the Court

Case Brief

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Parties

Oxford Gene Technology Ltd

Claimant/respondent

Affymetrix Inc

Defendant/appellant

Affymetrix UK Ltd

Defendant/appellant

Beckman Coulter Inc

Defendant/appellant

Procedural Posture

Appeal From Chancery Division (patents) / Court of Appeal Judgment

Legal Issues

  1. 1 Whether disclosure of privileged documents to opposing solicitors on a limited basis constitutes waiver of privilege
  2. 2 Whether the court has discretion to refuse amendment of a patent under section 75 of the Patents Act 1977
  3. 3 Whether Article 138 of the EPC fetters the court's discretion under section 75

Ratio Decidendi

Disclosure of privileged documents to opposing solicitors on a limited, confidential basis does not amount to a waiver of privilege; there is no obligation on a patentee to waive privilege in amendment proceedings; the court retains discretion to refuse amendment under section 75 of the Patents Act 1977, and Article 138 of the EPC does not override this discretion.

Court Disposition

Appeal dismissed

Orders

  • Declaration that the claimant has not disclosed to the first and second 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 7 August 2000 set aside