Preserving Confidentiality of Documents is Exceptional

The High Court has refused an application to preserve on a permanent basis the confidentiality of documents relied on in a disputed patent case. The refusal was based on the fact that the applicant was unable to demonstrate that there was a pressing interest in maintaining confidentiality. Our Commercial Disputes team examines the decision.

The High Court gave judgment on the validity of a patent earlier this year,[1] which was not published more generally at the time in light of interim confidentiality restraints imposed on certain documentation. Following that judgment, the defendant applied to make the confidentiality order permanent in a number of respects. However, that application was opposed by the plaintiffs. The High Court ultimately refused the application having reviewed the law concerning exceptions to the principles that justice is to be administered in public.[2] The Court was not satisfied that there was anything in the documents involved which disclosed anything more than had already been revealed. The Court was also of the view that the defendant was unable to identify anything in the disclosure of which would cause it harm.

Background

The underlying proceedings related to the validity of the defendant’s patent in rivaroxaban (an anticoagulant). Following the plaintiffs' opening submissions, the defendant sought an order under a confidentiality agreement between the parties. That agreement limited the use which information disclosed but designated as confidential could be put. This included an application that certain parts of the hearing be held in private. At the time, the Court considered it too early to make a permanent order of that kind. Instead, it made a temporary order but allowed the parties to return to court to seek a permanent one later. Following the substantive decision, the defendant applied to make the confidentiality order permanent. Specifically, the defendant sought that the judgment be redacted prior to publication regarding a small number of references to documents, as well as seeking redactions of the transcript where slightly more documents were referenced. Finally, the application sought that documents designated as confidential under the confidentiality agreement and which were ‘opened’ during the trial should keep their confidential status. The defendant’s application was refused in its entirety.

The application

Mr Justice Mulcahy reviewed the terms of the confidentiality agreement before looking at the basis for the application. He noted that, as originally sought during the trial, it was premised on Order 63A, Rules 5 and/or 6(1)(x) and/or 6(2)(b) and/or the inherent jurisdiction of the Court that the trial be conducted in way that maintained the confidentiality of the relevant documents. The defendant also relied on Section 45(1)(d) of the Courts (Supplemental Provisions) 1961 and/or the inherent jurisdiction that certain parts of the trial be held in private. The protections involved were sought essentially to preserve the confidentiality of information regarding the development of the drug which was the subject of the disputed patent. Affidavit evidence was given regarding the development cost of the drug and the protective steps taken by the defendant to protect its research. It was maintained that the documentation involved gave an “insight” into the defendant’s “confidential processes.” The plaintiffs in turn asserted that there was a “sea of published information” about the drug’s development and there was no exceptionality requiring the measures sought.

The Law

The starting point regarding jurisdiction was Article 34.1 of the Irish Constitution which sets out the imperative that justice shall be administered in public. The defendant also relied on the Trade Secrets Directive (Directive (EU) 2016/943) but it has no provision for a trial otherwise than in public.[3] The Courts (Supplemental Provisions) Act 1961 did envisage certain scenarios where private hearings may be allowed, but the defendant did not contend any specifically applied here. Accordingly, the defendant was left with having to rely on the Court’s inherent jurisdiction as identified by the Supreme Court in Gilchrist & Rogers v Sunday Newspapers[4]. In that case, old English case law was cited which stated that:

“[p]ublicity is the very soul of justice. It is the keenest spur to exertion and the surest of all guards against improbity. It keeps the judge himself while trying under trial”.[5]

Ultimately, from Gilchrist, Article 34.1 reflects the “great importance” of the “fundamental constitutional value” which requires the administration of justice in public. However, there may be limited exceptions, which must be interpreted narrowly, arising either under legislation or from “the common law power of the court to regulate its own proceedings.” In exceptional cases referable only to the common law power alone, “the interests involved must be very clear, and the circumstances pressing.” Reference was also made to the English Civil Procedure Rules, Rule 31.22(2) which permitted orders restricting the use of confidential documents. However, no such provision applies in Ireland. Also, it appeared from the case law that it was “not an order readily made” and that there was a high threshold to establish an entitlement of that nature.[6] In addition, English case-law regarding redactions confirms the need for “powerful reasons, supported by cogent evidence which addresses the details. Generalities will not do.”[7]

Discussion

Mr Justice Mulcahy noted, referring to Gilchrist, that exceptions to the constitutional requirement for justice to be administered in public are not confined to those set out in legislation. In cases without an express statutory exception, the court could still depart from the default position if the interests involved were “very clear and the circumstances pressing”. As he put it,

“an interest may be recognised by statute as being worthy of protection… but where there is no such recognition in statute, it is for the party seeking such protection to establish the existence of a clear interest and a pressing need for the protections sought, i.e., an imminent risk of harm if the protections are not put in place.”

He rejected the contention that, since it was a defendant, it did not have the choice of litigating at the expense of its information or not litigating. Rather, it had elected unsuccessfully to defend a patent and the court found that the documents over which protection was sought were consistent with the plaintiffs' complaint that the patent was obvious. The defendant was also criticised for not clearly identifying precisely what in the documents was worthy of protection. It had also not explained how claimed confidentiality applied to some, but not all, of the trial documentation. The drug’s development had been extensively discussed in journals which raised a question as to what current interest there was to protect. Ultimately, the defendant had failed to identify anything in the documents which disclosed something more than had already been revealed or different from an industry participant would expect. There was no justifiable interest in maintaining confidentiality.

Conclusion

The decision highlights the general principle that justice is to be administered in public in Ireland. The confidentiality of documents, and/or redaction of a judgment or transcript, will only be granted in exceptional cases. The courts have, in patent cases, put in place confidentiality clubs regarding discovered documents.[8] This application, however, went much further regarding documents used at trial. To succeed without an express statutory entitlement, an applicant will need to demonstrate the existence of a clear interest and a pressing need for the protections sought. The threshold is not low and a court will approach an application “with resolute scepticism”.[9] A party seeking to protect confidential information should not assume the court will grant such an order, particularly if the patent at issue is found to be invalid.

For more information and expert advice on patent disputes, contact a member of our Commercial Disputes team.

The content of this article is provided for information purposes only and does not constitute legal or other advice.

[1] Sandoz AG & Rowex Ltd v. Bayer Intellectual Property GmbH (No 1) [2025] IEHC 357

[2] Sandoz AG & Rowex Ltd v. Bayer Intellectual Property GmbH (No 2) [2025] IEHC 500

[3] Defendant asserted the Directive involved the recognition of “the need to protect confidential commercial information”.

[4] [2017] IESC 18

[5] Citing Lord Shaw in Scott v Scott [1913] AC 417

[6] Citing Lilly Icos Ltd v Pfizer Ltd [2002] 1 WLR 2253

[7] Unwired Planet International Ltd v Huawei Technologies Co. Ltd. [2018] RPC 8

[8] E.g., Teva v Boehringher [2015] IEHC 736

[9] BOC Aviation Ltd & Ors v Lloyds & Ors [2024] IEHC 162