In Pilot Drilling Control Ltd v Smith International Inc BL O/046/11, the UK Intellectual Property Office (UKIPO) has refused a request for confidentiality in respect of proceedings regarding the ownership of a patent. There was not a real risk of harm from disclosure, whether in the form of direct commercial damage or by inhibiting a party from putting forward their best case.
The Claimants brought a reference seeking determination of questions of inventorship and ownership in respect of a UK patent granted to the Defendants. The Claimants subsequently made a request for confidentiality under Rule 53 in respect of their own statement, its annexes (except for the patent), and all further documents filed at the UKIPO in the proceedings. As an alternative, they sought an order that the relevant documents could be redacted. The Defendants originally opposed the request but then withdrew their opposition.
The hearing officer referred to paragraph 3.37 of the IPO Hearings Manual, which refers in particular to the guidance given by the Court of Appeal in Lilly Icos Ltd v Pfizer Ltd (No2)  1 WLR 2253 and by the Patents Court in Diamond Shamrock Technologies SA's Patent  RPC 91. The hearing officer pointed out that very good reasons are required for departing from the normal rule of publicity. A simple assertion of confidentiality, even if supported by both parties, will not suffice. Good reasons might comprise direct commercial damage or the indirect effect of inhibiting a party from putting forward their best case.
The hearing officer was clear that there was no justification for a total blanket of confidentiality over the whole proceedings. The Claimants’ argument was that the parent companies of both the parties would suffer reputational damage if the proceedings were to become public. In this regard, they alluded to their respective reputations for vigorous enforcement of their intellectual property rights. While the hearing officer did not appear to doubt the Claimants’ assertion that the parties’ reputations would be affected, he said that if there had been a risk of particularly serious harm he would have expected the Defendants to do rather more than simply say that they were withdrawing their opposition to the confidentiality request. Moreover, no argument had been put forward that refusing to grant the request might cause one or other party to feel constrained to hold back from relevant or potentially relevant issues. On the contrary, the Claimant appeared prepared to go ahead even if the confidentiality request was refused.
For various reasons, subject to a minor concession, the hearing officer also refused the alternative request for redaction. For example, the majority of the redactions requested were aimed at preventing public identification of the parties as well as the patent in dispute, whereas this information was already in the public domain since it was contained in the Patents Form which, under Rule 53, could not be afforded confidentiality.
With regard to the annexes, the hearing officer concluded that the Claimants were less concerned about the sensitivity of particular details than they were to keep information about the proceedings in general from being made public.