9.6.7 Disclosure
In most patents proceedings, the discovery available – referred to as “disclosure” in the United Kingdom – is fairly limited.
9.6.7.1 Product and process descriptions
In place of disclosure on the issue of infringement, a defendant can and – particularly to avoid the costs and burden associated with documentary disclosure – often will opt to provide a product and process description. A product and process description is a detailed document describing the product or process alleged to be an infringement by reference to the disclosure of the patent and, in particular, the claims of the patent that the product or process is said to infringe.
9.6.7.2 Disclosure on validity
In many patents cases, provision is not made for disclosure on any question of patent validity. However, an alleged infringer may seek disclosure from the patentee in relation to, for example, insufficiency or obviousness, such as where the patentee seeks to run a case of commercial success to defeat a case of lack of inventive step.
When disclosure is sought on a question of validity, only documents relevant to a pleaded ground of invalidity that a party has in its power or possession and that came into existence no more than two years before or after the earliest claimed priority date of the patent are to be disclosed, unless the court orders otherwise. If, for some reason, one of the parties has a good reason to advance that there are relevant documents that they should see outside this narrow time window, then they will need to make an application for specific disclosure to the court and satisfy the court that there are very likely such relevant and important documents in the possession of the opposing party that will help to progress the case.
Disclosure in the Business and Property Courts is governed by the procedure under Practice Direction 57AD of the CPR.127 This scheme requires parties to discuss and jointly complete a document known as a “disclosure review document,” which identifies the issues in dispute on which disclosure should be given, which level of disclosure is sought (by reference to the five models discussed below), what documents are likely to exist, and the individuals in the relevant organizations who are likely to be custodians of those documents. Keywords should also be provided in most instances to enable electronic disclosure (i.e., keyword searches).
The five models of disclosure are as follows:
- Model A – disclosure confined to known adverse documents;
- Model B – limited disclosure;
- Model C – request-led search-based disclosure;
- Model D – narrow search-based disclosure; and
- Model E – wide search-based disclosure (said to be exceptional).
If a party seeks Model C disclosure, it must set out in the disclosure review document its detailed requests for particular documents or narrow classes of documents sought in relation to the issue for disclosure. There is no presumption that any party is entitled to disclosure. The party seeking disclosure must justify to the court that the model sought is appropriate, reasonable and proportionate.
In practice, the disclosure review document is rarely agreed upon between the parties and can be the subject of significant argument at a hearing, often the CMC. The court will then make an order reflecting its determination of the issues. Even where the parties agree upon the contents of the disclosure review document, the court will still be required to approve it and make the order it sees fit.