It is very common in patents actions for parties to rely upon or to seek disclosure of documents that a party (or a third party) considers to be confidential (in whole or in part). For example, product and process descriptions often contain confidential information. However, when evidence or a document has been read to or by the court or referred to at a hearing that has been held in public, the restrictions on that document only being used for the purpose of the proceedings are lifted.134 Further, interested parties may request access to the evidence or document, and any confidentiality in it may be lost. How these documents are addressed at trial is therefore important, as they must be appropriately managed.
The usual practice in the English courts is for the parties to agree to a “confidentiality club” (whether inter-parties or under the terms of a court order). These regimes usually provide that the parties’ lawyers, experts and certain individuals giving instructions may see the confidential material. The parties will therefore provide both confidential and non-confidential versions of any documents prepared or disclosed. In some cases, this is done by including any confidential information in an annex to the main document, but, more frequently, it is achieved through the use of redactions. The Patents Court Guide contains “confidentiality club” precedent documents.
At trial, if a confidential document is to be discussed, there are usually minor practical ways to address this. For example, the parties’ lawyers may refrain from orally mentioning any confidential information, instead asking the judge to read the relevant information to themselves from a document. Alternatively, where a more significant discussion is required, the court may sit in private (known as sitting in camera), but only when a good case can be made that it is necessary in the interests of justice to do so. In patents cases, this is only likely to be when evidence about technical trade secrets is to be given.
Where this happens, any recording or transcript of the proceedings will also be kept separate such that only people allowed access to the confidential information may view it. Given the principle of open justice, the court is generally reluctant to sit in private, particularly if the relevant confidential details do not have to be read out. When the court sits in private, members of the public and those outside any confidentiality club will be asked to leave the courtroom. Once the confidential evidence has been given, the court will again sit in public.
Once the trial is concluded, the parties must then seek an order from the court to restrict or prohibit the further use of any document, thus preventing the information from becoming public for the reasons outlined above.135 Such orders are known as “31.22 Orders,” after the provision in the CPR that governs the subsequent use of disclosed documents. The judge will need to be persuaded as to why the relevant material is truly confidential. Where such an order is made, the general rule regarding documents read to or by the court or referred to at a hearing that has been held in public is overridden, and the confidentiality of the documents is maintained. Where judgment is to be reserved to be delivered at a later date (as is common in patents cases), a 31.22 Order will be sought orally on a pro tem basis pending the further hearing on the consequential issues to be addressed after judgment.