In civil litigation cases, including IP matters, there is an implied undertaking by parties to the proceeding to keep documents and information disclosed during the discovery process confidential. In the leading case of Lac d'Amiante du Quebec Ltee v. 2858-0702 Quebec Inc. [2001] 2 S.C.R. 743, the Supreme Court of Canada stated that there is a rule of confidentiality which restricts use of any information produced or given under compulsion during discovery to the litigation in which the information was compelled. As the parties to the action are deemed to provide the undertaking to the court, only the court retains the power to relieve persons of the undertaking in cases where it is in the interests of justice to do so.

In the recent case Sanofi-Aventis Canada Inc. v. Apotex, 2008 FC 320, a patent case in the Federal Court, Apotex brought a motion seeking relief from the implied undertaking in respect of certain selected lab notebooks, semi-annual reports, presentation slides, licence agreements, and examination transcripts obtained on discovery. Apotex wanted to use the information in another patent proceeding in the Federal Court, Servier v. Apotex, involving the same defendant but different plaintiffs. Snider J. referred to the decisions of Lebel J. in Lac d'Amiante and Rothstein J. in the case of Visx Inc. v. Nidek Co. (1998), 80 C.P.R. (3d) 437 (T.D.), as setting out the test for relief from the implied undertaking, which required the court to weigh the prejudice or injustice that would be suffered by the parties in granting or denying the application for relief and to consider any special circumstances. The factors for consideration were stated to include, amongst others, the use to which the party seeks leave to put the discovered material, whether other proceedings raise substantially the same issues between the same parties, whether the discovered material is inherently confidential, whether the documents obtained through discovery were once publicly available but are no longer publicly available through no fault of the party seeking relief, and whether the party seeking relief wishes to impeach a witness in another proceeding who gave inconsistent versions of the same facts.

Justice Snider granted relief with respect to the presentation slides on the basis that they were previously publicly available, and that there could be no prejudice if the undertaking were released for these slides.

In denying relief with respect to the remaining documents Justice Snider stated at para. 34 that "the interests of justice in the information sought did not outweigh the rights of the parties to keep the information confidential." Relief was denied on the basis that there was serious prejudice to Servier in granting the relief because the parties to the Servier v. Apotex action were not the same, such that Servier would only be able to review the documents selected by Apotex and would not be able to review the whole discovery record. To allow relief with respect to the limited group of documents selected by Apotex would put Servier at a disadvantage, as there may be documents outside of the defined group that could assist Servier in responding to the documents selected by Apotex. Also, the failure of Apotex to seek out the information earlier, and through alternative methods that would have brought the documents into the Servier action without the need for "the extra­ordinary relief from the implied undertaking rule," was another factor that was considered as militating against the requested relief.

In the recent decision of the Supreme Court of Canada in Juman v. Doucette, 2008 SCC 8, a non-IP case, the court refused to vary the implied undertaking in a civil action on application by a non-party (the Vancouver police) on the basis that the implied undertaking applied only to the parties, and that it would be wrong for the non-party to be able to take advantage of statutorily compelled testimony in civil litigation to undermine the appellant's right to silence and the protection against self incrimination.

Accordingly, the courts seem to favour maintaining the implied undertaking unless there is no potential prejudice that may be sustained by granting such relief, or unless the interests of justice outweigh any prejudice that may be sustained. Relief from the implied undertaking will only be granted by the court in the clearest of cases.

An exception to court-ordered relief from the implied undertaking occurs in cases where information otherwise subject to the rule becomes part of the public record. In Canada v. Ichi Canada Ltd. (1992) 40 C.P.R. (3d) 119, Reed J. of the Federal Court Trial Division held that the implied undertaking restriction does not apply to information obtained through the discovery process if it is filed with the court and made part of the public record.

Similarly, in Moore v. Bertuzzi, (2007) 88 O.R. (3d) 499 – a civil action for damages sustained after the plaintiff, a hockey player, was hit from behind during an NHL game – Ontario's Superior Court of Justice held that the deemed undertaking (analogous to the im­plied undertaking rule) disappears once information is filed in court.

Although confidentiality orders are often utilized in IP proceedings, in cases where there is no such order and information (that would normally be subject to the implied undertaking) is filed with the court, the public filing exception will provide automatic relief.