UK: Court Of Appeal Allows Disclosure Of An Inventor’s Records To Assess Obviousness

Last Updated: 17 August 2007
Article by Nick Beckett and Tom Scourfield


The majority of the Court of Appeal (Jacob LJ dissenting) allowed an appeal against the High Court’s decision to refuse an application for disclosure of an inventor’s records. The majority judges refused to endorse a prima facie rule preventing such disclosure being ordered as they thought it would be unjust. Despite acknowledging Jacob LJ’s expertise in patent cases, they considered that rather than adopting a blanket rule of non-disclosure of inventors’ records, in the interests of proportionality, disclosure should be tailored depending on the likely value and significance of the evidence to be disclosed and the costs in doing so.

For full analysis and commentary on the Court of Appeal’s decision in Nichia Corporation v Argos Limited see below.

To view the article in full, please see below:

Full Article

Standard Disclosure

Under the Civil Procedure Rules ("CPR"), the parties must provide standard disclosure unless the court directs otherwise. Under this requirement a party to disclose, among other things, the documents on which he relies; and the documents which adversely affect his own case or another party’s case, or support another party’s case. In making such disclosure, a party must make a "reasonable" search for documents. The relevant factors involved in assessing "reasonableness" include the number of documents involved, the nature and complexity of the proceedings, the ease and expense of retrieving a particular document and the significance of a document likely to be located in the search.

Nichia’s patents

Nichia Corporation ("Nichia") owned two patents for white light-emitting diodes (LEDs). Argos Limited ("Argos") sold Christmas lights consisting of 120 white LEDs. Nichia claimed these light chains infringed the two patents. Argos counterclaimed that the patents were invalid on the ground of obviousness in the light of the common general knowledge and cited prior publications.

At the Case Management Conference before Pumfrey J, there was a dispute as to the type of disclosure that should be ordered. Nichia suggested limited or no disclosure was required, Argos argued that Nichia should disclose documents about the making of the invention and certain experiments which it had conducted to prove infringement. Argos had no technical documents to disclose in this regard. Pumfrey J refused both kinds of disclosure and Argos appealed. During the Court of Appeal hearing the parties reached agreement on disclosure in relation to experiments.

A blanket rule of non-disclosure of an inventor’s records?

The Court of Appeal, in a majority decision, allowed the appeal. Jacob LJ, who gave the dissenting judgment, suggested an approach whereby standard disclosure in the context of obviousness would only require disclosure of an inventor’s documents in very rare circumstances. The majority judges, Rix LJ and Pill LJ, concerned about the impact of a blanket rule of non-disclosure, opted for a more selective approach to the documents to be disclosed.

The minority decision - Jacob LJ

Jacob LJ noted that the test for obviousness as set out in legislation and case-law did not expressly take account of what the inventor actually did or thought and noted on that basis there was a strong argument for saying that what the inventor actually did was completely irrelevant; it followed that the corresponding disclosure was also irrelevant. Rather, the evidence required an assessment of whether an inventor had been inventive depended on expert evidence establishing the common general knowledge of the person skilled in the art and the teaching of the prior art.

Further, he noted the inconsistent approach of the courts as regards the weight to be attached to the inventor’s evidence. In some cases, obviousness has been assessed by the courts purely objectively but in others, private evidence or documents from the inventor have been admitted and the defendant’s struggle with the problem noted.

In line with the previous Court of Appeal decision in Molnlycke AB v Proctor & Gamble Limited Jacob LJ considered that the evidence of the expert witness should be regarded as the primary evidence and the evidence of the patentee/inventor and the defendant should be considered secondary; only in very few cases was disclosure of the parties’ records crucial. In his view, the principle of proportionality required that disclosure should be tailored to the size of the dispute. This meant that under normal circumstances, disclosure of the inventor’s records should not be ordered. Only in the largest kind of case, where legal costs formed a small part of what was at stake, would disclosure of this sort of material be appropriate.

The majority decision – Rix LJ and Pill LJ

Despite acknowledging his experience in the field of patent litigation and agreeing with his concerns regarding unnecessary and disproportionate expense, the majority judges disagreed with Jacob LJ on the grounds that supporting his decision and that of Pumfrey J would mean, in practical terms, an automatic bar on disclosure in this context.

Under CPR 31.5-7 the new regime of standard disclosure required a "reasonable search". This search should be tailor-made depending on the likely value and significance the resulting evidence. Rather than moving to a blanket rule of no disclosure, the majority judges considered it would be preferable to explore a means of addressing concerns about the cost of disclosure, while still applying the rationale of standard disclosure. The parties should therefore explore ways of limiting the search, for example, by date or by the nature of the document.


The Court of Appeal was reluctant to allow a rule that would automatically preclude evidence from inventors. Although excessive disclosure risks can add to the costs of litigation, both parties, and the court through its case management powers, should encourage litigation proportionate to the issues involved and the commercial value at stake. However, it is often the latter which has the greatest influence on cost. Further, parties may also take advantage on other mechanisms to manage costs, such as the streamlined procedure. Attempts to reduce the overall cost of patent litigation should involve an assessment of the process as whole, rather than focusing on just one type of documentary disclosure.

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to

Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.

The original publication date for this article was 17/08/2007.

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