- BL number
- O/588/16
- Concerning rights in
- GB 2 456 085 B
- Hearing Officer
- Dr J E Porter
- Decision date
- 14 December 2016
- Person(s) or Company(s) involved
- Fox International Group Limited
- Provisions discussed
- Section 118; rules 51, 53 and 108; CPR 5.4C
- Keywords
- Confidentiality, Extensions of time, Orders
- Related Decisions
- O/188/17
Summary
The patent was held by Spomb Fishing Limited (“Spomb”). A third party, Fox International Group Limited (“Fox”), requested that a number of documents on the patent file at the Office be kept confidential.
In particular the request concerned a copy of a Statement of Case relating to court proceedings in which Fox had challenged the validity of the patent. The copy of the Statement of Case had been filed at the Office by Fox’s patent attorneys in accordance with the Civil Procedure Rules. The request for confidentiality also extended to correspondence between Fox’s attorneys and the Office in relation to the status of the Statement of Case, and other related documents on the patent file.
One basis for confidentiality was said to be a Consent Order from the IP Enterprise Court. This ordered that, under CPR 5.4C and by consent between Fox and Spomb, a non-party could not obtain a copy of any statements of case which are on the court file. A second basis for confidentiality was said to be rule 53 of the Patents Rules.
The Hearing Officer decided that the IPEC Consent Order did not in itself prevent the Comptroller from providing access to patent documents in accordance with the patents legislation. However, the documents in question were all the subject of a rule 53 request, with extensions of time granted where necessary. Under rule 53, there were then good reasons why the contents of the Statement of Case (and its Annexes) should be kept confidential. There were also good reasons why the contents of a licence agreement between Fox and Spomb should be kept confidential under rule 53. Limited redactions to correspondence were also to be made on this basis. However, there was no good reason why information disclosing the mere existence of the proceedings, the licence agreement and confidentiality requests should itself be kept confidential.
On the question of whether the Consent Order itself was confidential under the IPEC’s rules or practices, the Hearing Officer sought further submissions.