Case: Warner-Lambert Co v Glaxo Laboratories Ltd [1975] RPC 354
Outcome: followed
The position under Anglo-Australian law is similar. In England the leading case is Warner-Lambert Co v Glaxo Laboratories Ltd [1975] RPC 354. This was a patent infringement action. The question that arose was the extent to which the defendant was required to disclose its trade secrets to representatives of the plaintiff, a US corporation that happened to be one of its main competitors. The trade secrets had been disclosed to plaintiff's counsel, solicitor, patent attorney and an expert on undertakings not to use the information except for the purposes of the action. The plaintiff sought disclosure to its chief executive, general counsel, patent counsel and an Italian scientist employed by a subsidiary company. The judge allowed disclosure on certain conditions to the chief executive and general counsel but not to the others. Both sides appealed. Buckley LJ delivered the leading judgment in the Court of Appeal. He said ([1975] RPC at 356) the case presented "a balance or conflict of expedients". On one side, the plaintiff was entitled to protection against infringements of its patents. On the other, the defendant was entitled to have its secrets protected. The question for the court then was how could justice be done and, at the same time, effect be given to the rights of each party to the greatest possible extent. Buckley LJ decided that the chief executive should have access to the trade secrets, notwithstanding the risk involved. He reasoned ([1975] RPC at 360-361) that the plaintiff's agents "are not authorised to make any major decisions on the company's behalf, such as, for instance, a decision whether to continue or abandon the action. Such a decision should be made by the company, not by its legal advisers, and still less by its scientific advisers." Buckley LJ considered that disclosure should not be made to anyone else, including to the General Counsel. As regards counsel, he considered ([1975] RPC at 361) that the legal issues in question were issues of English law and that the plaintiff had English legal advisors of "the highest calibre". By contrast, the plaintiff's General Counsel and patent counsel in the United States were not qualified experts in the field of United Kingdom patent law. 10 I should also refer to Roussel Uclaf Imperial Chemical Industries plc [1990] RPC 45 a case which followed Warner-Lambert Co v Glaxo Laboratories Ltd. The question there was whether trade secrets should be disclosed to two patent attorneys employed by the plaintiff. Both worked in the plaintiff's Paris office and were responsible for both the litigation in England and parallel litigation in France. The patent attorneys were permitted access to the confidential information but on terms that the plaintiff undertook that the attorneys "should not be concerned in any way with the French proceedings" and that the plaintiff would "pay to the defendants any sum that the court shall decide the defendants may have suffered by any wrongful disclosure of the secret process". The first condition was imposed to "minimise the chance that the confidential information [would] be used in [the French] litigation". The second condition was imposed because of the difficulty faced by the defendants in obtaining satisfactory compensation in the French courts if the confidential information was leaked.