Generics (UK) Ltd v Yeda Research & Development Co Ltd & Anor

This appeal is from a judgment of Floyd J of 25^th November 2011, [2011] EWHC 3200 (Pat). It was made in an action between Generics (UK) Ltd (who trade under the name “Mylan”) and Yeda Research and Development Company Ltd. and Teva Pharmaceutical Industries Ltd. Having heard the oral argument, we told the parties of the result, namely that the appeal would be allowed. In view of the urgency (the action is shortly to come to trial) we indicated that the injunction granted by the judge would be discharged upon final judgment and meanwhile it would be suspended (in that way time for appeal would not start running). These are my reasons for allowing the appeal.

In the action Generics seeks a declaration of non-infringement and revocation of Yeda’s EP (UK) No. 0,762,888, under which Teva are exclusive licensees. The patent relates to a pharmaceutical called Copaxone, sales of which form an important part of Teva’s business. The action commenced in March 2011 and the trial commenced on 14th May this year.

In February 2011 a senior in-house patent attorney with extensive experience of litigation (she has been concerned with 150 or so oppositions in the EPO) was employed by Mylan as its Director of Intellectual Property. Her duties were to be responsible for managing Mylan’s European patent matters, including litigation, oppositions and prosecutions with respect to a portfolio of products. Her responsibilities included the conduct of the action and a corresponding action in France. Until Floyd J granted the injunction the subject of this appeal, Mylan’s solicitors took their instructions from the senior in house pattent attorney. There is a further corresponding action in the US but she does not have the conduct of that.

From 2008 to January 2011 the in-house patent attorney for the Claimant was employed by Teva where she was responsible for oppositions in the European Patent Office. She was not concerned with any litigation concerning Copaxone. All she knew about it was that the product was being handled by a team in Israel. No one in her department at Teva had any involvement with Copaxone litigation.

Notwithstanding that, Teva claims that whilst working for it, the in-house patent attorney learned of confidential information about its Copaxone litigation. So Teva contends that in the circumstances the in-house patent attorney ought not to be doing any work for Mylan in the action. Floyd J acceded to that contention, granting an injunction that:

“[Mylan] shall cease to act by, or otherwise seek assistance or advice from, its Director of Intellectual Property, namely …, in relation to this action.”

The application for the injunction came about in a somewhat indirect way in that neither the in-house patent attorney nor Mylan has been sued directly. It happened this way. By an application of 15^th November 2011 Mylan sought an order that their in-house patent attorney, subject to her signing a confidentiality undertaking, be given access to copies of the defendants’ documents which had been disclosed as confidential. By a counter-application of 21^st November the injunction was sought.

Teva accepts that Mylan’s in-house patent attorney is entirely honest. She said “I never received or obtained any confidential information (or indeed any information about patents or litigation) concerning Copaxone as a result of my employment with Teva.” She also said:

“I also have no recollection of being copied in on any communications or being involved in any discussions on any aspect of litigation relating to Copaxone while at Teva. Indeed the first time I learned about any litigation concerning Copaxone was during my interview process with Mylan when Steven Flynn (who has overall responsibility for global IP at Mylan) asked me whether I had ever done any work on Copaxone at Teva.”

Teva says she is mistaken; that there was some discussion about Copaxone litigation. It took the form of being copied in on some emails and an oral discussion with Dr Hausdorff, Teva’s Associate General Patent Counsel who has responsibility for Copaxone. It is said that this communicated significant confidential information which, although Mylan’s in-house patent attorney does not currently remember it, might be remembered, albeit subconsciously, and might be used against Teva in the action.

The Judge accepted that, saying:

“[17] I should make it absolutely clear that I do not consider that [Mylan’s in-house patent attorney] is being at all untruthful in any of the evidence that she has given, but it is a matter of common experience that although one feels, or feels strongly, that one has no relevant information on a topic, one’s recollection can subsequently be shown to be wrong. Indeed the way in which the evidence has gone in this case has suggested that [Mylan’s in-house patent attorney’s] initial recollection was at least to some degree incorrect and that she had been exposed, at least peripherally, to discussions concerning the Copaxone case.

[18] Mr. Turner submits that, rather like the case considered by Lightman J in In re a Firm of Solicitors, all that is involved here is the fact that [Mylan’s in-house patent attorney] shared an office with those who were concerned with Copaxone and that there is not at present a sufficient identification of particular confidential information to justify the court’s intervention.

[19] I have not found this an all together easy question to decide, but I have reminded myself that the threshold is not a particularly high one. It seems to me that communications of the type which I have considered are by their very nature confidential and privileged. The communications are not central to the litigation, with which this court is concerned, though they are, I think, relevant to it. I think there is a risk in the present case that if [Mylan’s in-house patent attorney] continues to act on behalf of Generics her memory of events such as those to which I have referred, …, may be at the back of her mind and may, I suspect unconsciously, nevertheless in fact influence her strategy and conduct and the consequent instructions she gives in the case.

[20] I have therefore come to the conclusion, somewhat reluctantly, that the case is an appropriate one for the court to intervene by way of injunction. I have of course borne in mind that the right of a party to decide by whom it conducts its litigation is, absent the risk of misuse of confidential information, a very strong consideration, but it does seem to me that here is such a risk and accordingly I propose to protect the defendants by eliminating the risk by injunction.”

It was common ground before the Judge that the applicable principles were those established in Prince Jefri Bolkiah v KPMG [1999] 2 AC 222. There was no argument about whether a patent attorney (the former name, still in statutory use, is patent agent) should be treated in the same way as if she were an employed solicitor. It was common ground that she should.

Before us, Mr Michael Bloch QC, advanced a number of grounds. Twelve points are listed in the grounds of appeal. They can be summarised into two broad groups. I do so in a different order from that in which they were advanced:

Mr Simon Salzedo QC for Teva submitted broadly:

Mr Bloch disputed that last contention, submitting that the contract terms added nothing but if they did then they were void as being in unreasonable restraint of trade. It is not necessary to consider these points, which, because they have no general importance, I do not decide. I merely observe that my provisional view is that the express contract term point adds nothing.

There was also some discussion before us, but not before the Judge, about another aspect of the applicable principles. Given that neither Mylan nor its in-house patent attorney was actually being sued, quite what standard should be applied? Was it similar to that applicable for an interlocutory injunction? And in particular was there any question of balancing the interests of the parties and also of Mylan’s in-house patent attorney? As far as Mylan is concerned there is the obvious damaging effect of the loss of her services. And as far as Mylan’s in-house patent attorney is concerned it was suggested that we should infer that her employment with Mylan might be in danger if she could not work on Copaxone cases: Copaxone had been mentioned in her job interview and work on it was clearly intended to be an important part of her activities.

It is clear that if Bolkiah principles apply there is no question of any balancing, see per Lord Millett at p237B. The interests of the former client prevail. But if interlocutory injunction principles apply, then the potential harm to the defendant if an injunction is “wrongly” granted may potentially come into play.

In the end this point did not matter, for even on interlocutory injunction applications (and it should not be forgotten that Bolkiah itself was an interlocutory injunction case) the balance of convenience matters little if the reality is that the decision will determine the matter finally. So I say no more about “balancing”.

As regards Mr Bloch’s “too nebulous” point, since it is said to involve Teva’s confidential information the parties were agreed that we should consider it “in private”. Mylan’s in-house people left the Court when it was discussed. They included Mylan’s in-house patent attorney who has sensibly chosen not to see the allegedly confidential information which it is contended may lie at the back of her mind and be dredged up from her unconscious to be used against Teva. Although I doubt that the information is really confidential (it seems self-evident to me) I will deal with this point in a confidential appendix, stating only my conclusion here. It is that the Judge was wrong in his assessment. The alleged confidential information was at most peripheral to the Copaxone litigation. The evidence shows that Teva itself did not really regard a possibility of misuse as realistic. Otherwise it would have raised the point much much earlier. So, even though, once it is shown that a litigator has received confidential information, the burden of showing that there is no risk of misuse lies on her, the evidence in this case discharges that burden. The Judge overlooked some key points in coming to his assessment. For instance Teva do not say when they first knew that Mylan’s in-house patent attorney would or might be working on Copaxone litigation. The fair inference on the evidence is that it knew that at least eight months before it applied for an injunction. Its own conduct shows that there is no real risk of misuse of this peripheral point.

I elaborate a little here. A barring order on its lawyer can obviously have a damaging effect on a party’s litigation preparation. If a former client (or employer) really believes that there is a risk of misuse or disclosure of confidential information, then it will act at once. If it stands by, allows the litigator to get well into the case, and then claims there is a real risk of mis-use, the court will view the claim with considerable scepticism. If someone is treading on your toe or about to do so you shout. If you wait for months first then complain in a desultory way, you are apt not to be believed.

I could stop here. But the question of the position of a former in-house litigator is clearly one of general importance and was fully argued. So I shall express my views. They are firstly that an employed patent attorney litigator stands in exactly the same position as an employed lawyer litigator (barrister or solicitor). And secondly that the Bolkiah principles apply with equal force to a former employed litigator as they do to a former independent litigator.

I turn first to the question of whether there is a difference between the position of an in-house patent attorney and an in-house lawyer. As was the case below it was not suggested there is a difference, but it is worth considering why. Clearly a patent attorney acting for a client in litigation will be doing the same work whether in or out-house. The work involves the following sorts of thing, namely deciding what points to be run and not run, giving instructions to and discussing all aspects of the case with counsel, gathering evidence, conducting a disclosure exercise, selecting experts to give evidence, working on expert evidence, deciding what witnesses to call and not to call and so on. Work-wise there is no difference.

Moreover there is no difference as regards privilege so far as intellectual property litigation is concerned. The Copyright, Designs and Patents Act 1988 as amended provides:

“280(1) This section applies to communications as to any matter relating to the protection of any invention, design, technical information or trade mark or as to any matter involving passing off.

(2)

Any such communication –

(a)

between a person and his patent agent, or

(b)

for the purpose of obtaining, or in response to a request for, information which a person in seeking for the purpose of instructing his patent agent

is privileged from disclosure in legal proceedings in England, Wales or Northern Ireland in the same way as a communication between a person and his solicitor or, as the case may be, a communication for the purpose of obtaining, or in response to a request for, information which a person seeks for the purpose of instructing his solicitor.”

The work of in-house litigation solicitors attracts litigation privilege in exactly the same way as if they were external lawyers, see Alfred Crompton Amusement Machines v Commissioners of Customs & Excise No.2, [1972] 2 QB 102 at 129 (per Lord Denning MR with whom the other members of the Court agreed). This proposition was not challenged in the House of Lords, see [1974] AC 405 at p.431 per Lord Cross. If the subject-matter of the claimed privilege is autonomous EU law then the work of in-house lawyers will not be privileged, (Akzo Nobel v EC, Case C-550/07P) and the work of patent attorneys will likewise be unprivileged.

Likewise both solicitors and patent attorneys are members of professional bodies. They are subject to rules as to professional ethics and disciplinary proceedings for their breach. This again makes both solicitors and patent agents stand somewhat apart from “ordinary” employees. Of course there can be other sorts of professional employee, such as doctors, who are members of professional bodies, but their position is not quite the same. This is because a breach of the rules as to the conduct of litigation, e.g. suppressing a document which ought to be disclosed, will not only be punishable in disciplinary proceedings but is central to their function as professionals. If there is a conflict between the interests of his employer and his professional duties a litigator, whether employed or engaged professionally, must put the latter first.

So there can be no rational difference for treating the work of in-house patent attorneys and that of in-house lawyers differently. I would hold they stand in the same position.

I turn to the next question, therefore, do the Bolkiah rules apply to ex-employed litigators who may work against their former employer? I begin by considering the rules themselves. They were formulated by Lord Millett. He held that the jurisdiction is founded “on the protection of confidential information”, p.234H. It is not based on a fiduciary relationship:

“My Lords, I would affirm this [i.e. protection of confidential information] as the basis of the court's jurisdiction to intervene on behalf of a former client. It is otherwise where the court's intervention is sought by an existing client, for a fiduciary cannot act at the same time both for and against the same client, and his firm is in no H better position. A man cannot without the consent of both clients act for one client while his partner is acting for another in the opposite interest. His disqualification has nothing to do with the confidentiality of client information. It is based on the inescapable conflict of interest which is inherent in the situation (pp.234H-235A)

……

Where the court's intervention is sought by a former client, however, the position is entirely different. The court's jurisdiction cannot be based on any conflict of interest, real or perceived, for there is none. The fiduciary relationship which subsists between solicitor and client comes to an end with the termination of the retainer. Thereafter the solicitor has no obligation to defend and advance the interests of his former client. The only duty to the former client which survives the termination of the client relationship is a continuing duty to preserve the confidentiality of information imparted during its subsistence (pp.235C-D).”

However once it is shown that a solicitor did receive confidential information when acting for a client, he comes under a strict duty to ensure that it cannot be used against that client. Lord Millett put it this way:

“Accordingly, it is incumbent on a plaintiff who seeks to restrain his former solicitor from acting in a matter for another client to establish (i) that the solicitor is in possession of information which is confidential to him and to the disclosure of which he has not consented and (ii) that the information is or may be relevant to the new matter in which the interest of the other client is or may be adverse to his own. Although the burden of proof is on the plaintiff, it is not a heavy one. The former may readily be inferred; the latter will often be obvious. ….Whether a particular individual is in possession of confidential information is a question of fact which must be proved or inferred from the circumstances of the case, p.235D-F.

Degree of risk

It follows that in the case of a former client there is no basis for granting relief if there is no risk of the disclosure or misuse of confidential information, p.236B

….

It is in any case difficult to discern any justification in principle for a rule which exposes a former client without his consent to any avoidable risk, however slight, that information which he has imparted in confidence in the course of a fiduciary relationship may come into the possession of a third party and be used to his disadvantage. Where in addition the information in question is not only confidential but also privileged, the case for a strict approach is unanswerable. Anything less fails to give effect to the policy on which legal professional privilege is based. It is of overriding importance for the proper administration of justice that a client should be able to have complete confidence that what he tells his lawyer will remain secret. This is a matter of perception as well as substance. It is of the highest importance to the administration of justice that a solicitor or other person in possession of confidential and privileged information should not act in any way that might appear to put that information at risk of coming into the hands of someone with an adverse interest, p.236G-H”

I regard that last paragraph as conclusive of the question of whether or not an in-house lawyer is to be regarded as in a different position. The “proper administration of justice” is of “overriding importance.” It makes no difference from that perspective whether or not the former lawyer was employed or not. Both the perception and the substance are the same.

Mr Bloch contended otherwise, that an employed lawyer was under a lesser duty. True it is, he submitted, that she cannot use her former employer’s trade secrets after she has left, but that is both limited to a trade secret properly so-called (see the well-known somewhat comically named case of Faccenda Chicken v Fowler [1987] 1 Ch 117 at p. 137). Moreover any injunction granted will be confined to preventing misuse of that trade secret; a general barring injunction will not be granted. For the latter proposition he relied on the recent case in this court, Caterpillar Logistics v Huesca de Crean [2012] EWCA Civ 156. He said that a barring order would only be appropriate where it was to enforce a valid restrictive term in the contract of employment. If the employer failed to extract such a term when the lawyer was employed, then no barring order will ever be made.

I do not accept that any of this makes sense in the context of a former in-house lawyer or patent agent who had been concerned with conducting litigation for her employer. Once it is shown that a lawyer, whilst employed as a litigator, has received what can fairly be regarded as confidential information concerning or touching a piece of the employer’s litigation it seems to me to be elementary that she cannot turn round after employment so as to act on the other side. I think the information will self-evidently be regarded as a Faccenda trade secret properly so-called. And the only practical way to protect its misuse would be by a barring order. After all the former employer will never be able to find out if the information was disclosed or used by the former litigator when acting for the other side.

Caterpillar was a very different sort of case. It was a grossly heavy-handed egregious attempt to prevent the ex-employee (not subject to any restrictive covenant) from working for a large customer of that employer. The employee agreed that she had been privy to some confidential information whilst working for her former employer, but denied that she had ever used or threatened to use it (and was willing to undertake not to do so). The former employer said that was not enough. It wanted a barring order. That order was refused with some force first by Tugendhat J and then by this court.

An attempt was made to argue that Bolkiah principles should be extended to cover ordinary employees. Stanley Burnton LJ giving the principal judgment quoted the passage from Lord Millett about the “highest importance to the administration of justice” which I have quoted. He emphasised with italics those words and went on to say:

“[49] In my judgment there is nothing in Lord Millett’s speech to justify the relief granted in that case, which prohibited KPMG from acting against their former client in connection with a matter in which they had previously acted for him, to the ordinary relationship of employer and employee. That the principle for which it is authority is confined to solicitors and the like is confirmed by the speech of Lord Hope [which he then cited].”

It seems to me abundantly clear that Stanley Burnton LJ was treating solicitors who had acted for a client as subject to Bolkiah principles, and was not concerned with whether they had been “in-house” or not. His emphasis on the administration of justice would not make sense otherwise.

Stanley Burnton LJ also referred to the recent Hong Kong Court of Final Appeal case of PCCW – HKT Telephone v David Aitken [2009] HKCFA 11. Mr Bloch took us to certain passages upon which he relied. I can say with utter confidence that the case is of no assistance here. For the leading judgment of Ribeiro PJ concludes with this passage, which it fell to Mr Salzedo to draw to our attention:

“[45] As a postscript what this judgment does not decide should be mentioned. Questions concerning possible relief against an in-house lawyer who changes jobs to take up a position on the other side of a contentious issue; or against a person who moves from employment as in-house lawyer to private practice as a solicitor (or vice-versa) to act on the other side of a contentious matter, do not arise on the present appeal. I wish to leave such questions open.”

Bokhary PJ, Chan PJ and Litton NPJ agreed with Ribeiro PJ. Lord Hoffmann NPJ also gave a substantive judgment with which Bokhary PJ, Chan PJ and Litton PJ agreed. It did not contain the express reservation of Ribeiro PJ which I have cited, but I think it is fairly clear that Lord Hoffmann was not intending to deal with a former employed litigator turning round after employment and acting on the other side. The case was concerned with a former employee who had had access to legally privileged information. But he had not himself acted as an in-house litigator even though he was in fact a lawyer. Lord Hoffmann was at pains to point this out at [65]. There he distinguished Canadian Pacific v Aikins, MacAuley & Thorvaldson (1998) 157 DLR (4^th) 473 on its facts. The Manitoba Court of Appeal had restrained a former in-house lawyer of Canadian Pacific, now in private practice, from acting against his former employer because he had received information as counsel, albeit in-house. If Lord Hoffmann had thought the case wrongly decided in law he would surely have said so rather than merely distinguishing it on its facts.

There is, of course, one difference between an in and out-house litigator, a point relied upon by Lord Hoffmann at [62]. The former only has one client and cannot (without giving up his job) refuse to act. An independent litigator has many clients and, at least in the case of a solicitor (not subject to the cab-rank rule) can choose not to act for a particular client. I do not read Lord Hoffmann in this paragraph as saying that what he called the “special remedy against solicitors” did not apply to in-house litigator solicitors. He was refusing to extend the special rule to “employees” who had had access to legal professional privilege.

So this difference is not, to my mind, enough of a difference to put an in-house litigator in such a different position that the Bolkiah principles do not apply to him. I think his former employer is entitled to just as much protection from his former employee litigator acting against him as if the litigator had been independently engaged. The overriding interest in the administration of justice so requires.

Thus I have come to the firm opinion that the Bolkiah principle applies every bit as much to a former employed litigator as it does to a former privately engaged litigator.

What then is the Bolkiah principle? In what way is it stronger than the general principle that a former employee may not use his former employer’s trade secrets properly so-called? Lord Millett provided the answer in clear and unmistakeable terms:

“I prefer simply to say that the court should intervene unless it is satisfied that there is no risk of disclosure. It goes without saying that the risk must be a real one, and not merely fanciful or theoretical. But it need not be substantial, p.237A

In my view no solicitor should, without the consent of his former client, accept instructions unless, viewed objectively, his doing so will not increase the risk that information which is confidential to the former client may come into the possession of a party with an adverse interest, p.237 E-F

Once the former client has established that the defendant firm is in possession of information which was imparted in confidence and that the firm is proposing to act for another party with an interest adverse to his in a matter to which the information is or may be relevant, the evidential burden shifts to the defendant firm to show that even so there is no risk that the information will come into the possession of those now acting for the other party, p.237G.”

It is that test I have applied in the confidential appendix: is there a real risk, one not merely fanciful or theoretical, that the alleged confidential information will be disclosed? Teva by its own conduct has shown that there is none in relation to the peripheral points relied upon. The Judge erred in his assessment of a real risk by not taking that conduct into account.

It is for that reason that I think the appeal should be allowed.

I agree with Sir Robin Jacob that this appeal should be allowed because there is no real risk that the alleged confidential information will be disclosed by Mylan’s in-house patent attorney.

I respectfully differ from him, however, in the analysis of the relevant legal principles and their application to the facts of the present case. In particular, I do not agree that the principles in Prince Jefri Bolkiah v KPMG [1999] 2AC 222 apply in the present case. The difference between us can be summarised briefly as follows. If the principles in Bolkiah apply, then, in order to avoid the injunction sought by the respondents, the burden lies on Mylan’s in-house patent attorney, or rather the appellant, to satisfy the Court that there is no real risk of disclosure or other unauthorised use by Mylan’s in-house patent attorney of the confidential information which she acquired while working for Teva and on which Teva relies for the injunction. That is so, even though the Judge concluded that Mylan’s in-house patent attorney is not presently conscious that she holds any such information. Indeed, the very basis for the Judge’s decision is that, because the memory of the relevant information may be at the back of Mylan’s in-house patent attorney’s mind, it may unconsciously influence her strategy and conduct in handling these proceedings. Although Bolkiah was not a case about employees, but about an independent firm of accountants, whose position was considered analogous to a firm of solicitors, Sir Robin Jacob considers there should be no difference between the obligations as to confidentiality of an employed patent attorney or an employed solicitor and one in private practice.

I fully appreciate the immediate attractiveness and simplicity of that approach. I consider, however, that there are sound reasons of principle and policy why, in the case of an employed patent attorney or, for that matter, an employed solicitor, the burden lies on the former employer to satisfy the court of the probability of wrongful disclosure or use of confidential information. In particular, there are the following material differences between the position of a person who is employed, whether or not a patent attorney or a solicitor, and a solicitor or patent attorney in private practice acting for a client: (1) the foundation of the legal relationship between an employer and an employee is the contract of employment, including its express and implied terms as to confidential information; (2) the relationship between a solicitor and a client (and, insofar as it is similar, a patent attorney and a client) is a fiduciary relationship, but an employment relationship is not of itself a fiduciary relationship; (3) an employee is, at any one time, contractually bound to a single employer, but can be expected to perform similar functions for each successive employer (whether or not a competitor), and, in order to pursue his or her career, will need to take to each successive employer (subject to any legal restrictions regarding confidential information) the knowledge, skill and experience previously gained; and (4) if the employer wishes to restrict the activities of the employee after termination of the employment, the employer can and should do so by means of a legally valid restrictive covenant.

In view of the importance of this issue, I set out my analysis more fully below.

The hearing before Floyd J proceeded on the footing that the issue whether Mylan’s in-house patent attorney should be prevented from acting for the appellant, Generics (UK) Limited (trading as Mylan) (“Mylan”), in relation to these proceedings is to be determined by reference to the principles in Bolkiah.

In Bolkiah the House of Lords granted an injunction against the defendants from acting for the Brunei Investment Agency in an investigation into its financial affairs during the period when the claimant, Prince Jefri, had been its chairman, including the location of certain assets which were suggested to have been used by Prince Jefri for his own benefit. The ground for the application for the injunction was that the defendants had provided forensic accounting services and litigation support for the claimant, Prince Jefri, personally during that period and so gained access to confidential information relating to the extent and location of his assets. The case for Prince Jefri, and the reasoning in the House of Lords, proceeded on the basis that, for the purposes of determining whether or not an injunction should be granted, the defendants, acting as forensic accountants for Prince Jefri, were to be regarded as in the same position as solicitors.

The leading speech was given by Lord Millett, with whom the other members of the appellate committee agreed. Lord Millett’s starting point was that, although the fiduciary relationship between solicitor and client comes to an end with the termination of the retainer, the solicitor is under a continuing duty to preserve the confidentiality of information imparted during its subsistence: page 235 D. He referred to “the fundamental principle of equity that a fiduciary may not put his own interest or those of another client before those of his principal”: page 237E. His analysis and judgment were that, in a case where a plaintiff seeks to restrain the former solicitor from acting in a matter for another client, (1) it is for the plaintiff to establish (a) that the solicitor is in possession of information which is confidential to him and to the disclosure of which he has not consented, and (b) that the information may be relevant to the new matter in which the interest of the other client is or may be adverse to his own case; and, if so, (2) the court will intervene unless it is satisfied (that is to say, unless the former solicitor discharges the evidential burden of showing) that there is no real risk of disclosure: pages 235E, 237A, 237G.

The respondents contend (at least in their skeleton argument) that the reasoning in Bolkiah did not turn on the fiduciary status of the defendants. That is plainly an oversimplification. Lord Millett’s reasoning was that the defendants were subject to a continuing fiduciary duty (to preserve confidentiality) in respect of the confidential information even after the termination of the contractual retainer. The existence of the fiduciary duty was central to his decision.

In applying the Bolkiah rule to the present case, the Judge said at [12]:

“It is true to point out that a patent attorney is not a solicitor and it is not necessary for me to consider for the purposes of this application whether a patent attorney is a fiduciary. Nevertheless, the rule as there expressed applies to anyone in possession of confidential information. Moreover, communications between a patent attorney and his client in matters relating to patents and patent prosecution enjoys a statutory privilege under the Patents Act 1977.”

The Judge summarised his conclusion, on the application of the Bolkiah rule to the facts, as follows:

“19.

I have not found this an all together easy question to decide, but I have reminded myself that the threshold is not a particularly high one. It seems to me that communications of the type which I have considered are by their very nature confidential and privileged. The communications are not central to the litigation with which this court is concerned, though they are, I think, relevant to it. I think there is a risk in the present case that if [Mylan’s in-house patent attorney] continues to act on behalf of Generics her memory of events such as those to which I have referred, [REDACTED], may be at the back of her mind and may, I suspect unconsciously, nevertheless in fact influence her strategy and conduct and the consequent instructions she gives in the case.

20.

I have therefore come to the conclusion, somewhat reluctantly, that the case is an appropriate one for the court to intervene by way of injunction. I have of course borne in mind that the right of a party to decide by whom it conducts its litigation is, absent the risk of misuse of confidential information, a very strong consideration, but it does seem to me that there is such a risk and accordingly I propose to protect the defendants by eliminating the risk by injunction.”

In view of the way that the matter was presented to the Judge, and argued before him, I can perfectly understand why the Judge approached the matter in that way and reached that conclusion. On the appeal, however, a very different approach was taken on behalf of Mylan’s in-house patent attorney. Her argument before us was, in summary, that she had never been a fiduciary for her former employer, Teva UK Limited (“Teva”), or at least not in relation to the information on which Teva relied for its application for an injunction, and therefore Bolkiah is irrelevant. It is said by Mr Michael Bloch QC, on her behalf, that the applicable principles are those laid down by the Court of Appeal in Faccenda Chicken Ltd v. Fowler [1987] 1 Ch 117.

In Faccenda Chicken the Court of Appeal was concerned with the obligations of an employee or former employee not to make unauthorised disclosure or use of confidential information acquired during the employment. The principles stated by the Court of Appeal may be summarised as follows:

(1)

Where the parties are, or have been, linked by a contract of employment, the obligations of the employee are to be determined by the contract with the employer.

(2)

In the absence of any express term, the obligations of the employee in respect of the use and disclosure of information are the subject of implied terms.

(3)

While the employee remains in the employment of the employer the obligations are included in the implied term which imposes a duty of good faith or fidelity on the employee. The extent of the duty of good faith will vary according to the nature of the contract.

(4)

The implied term which imposes an obligation on the employee as to the employee’s conduct after the determination of the employment is more restricted in its scope than that which imposes a general duty of good faith. The obligation not to use or disclose information may cover secret processes of manufacture such as chemical formulae or designs or special methods of construction, and other information which is of a sufficiently high degree of confidentiality as to amount to a trade secret. The obligation does not extend, however, to cover all information which is given to or acquired by the employee during the period of employment, and in particular may not cover information which is only 'confidential' in the sense that an unauthorised disclosure of such information to a third party while the employment subsisted would be a clear breach of the duty of good faith.

(5)

In order to determine whether any particular item of information falls within the implied term so as to prevent its use or disclosure by an employee after the employment has ceased, it is necessary to consider all the circumstances of the case, including the following. (a) Employment in a capacity where 'confidential' material is habitually handled may impose a high obligation of confidentiality because the employee can be expected to realise its sensitive nature to a greater extent than if employed in a capacity where such material reaches the employee only occasionally or incidentally. (b) The information will only be protected if it can properly be classed as a trade secret or as material which, while not properly described as a trade secret, is in all the circumstances of such a highly confidential nature as to require the same protection as a trade secret. (c) It is relevant whether the employer impressed on the employee the confidentiality of the information. (d) It is relevant whether the relevant information can be easily isolated from other information which the employee is free to use or disclose.

In relation to restrictive covenants by the employer to protect confidential information, the Court of Appeal in Faccenda Chicken cited with approval the following passage from the judgment of Cross J in Printers and Finishers Ltd v Holloway [1965] 1 WLR 1 at 6:

“If [the managing director] is right in thinking that there are features in his process which can fairly be regarded as trade secrets and which his employees will inevitably carry away with them in their heads, then the proper way for the plaintiffs to protect themselves would be by exacting covenants from their employees restricting their field of activity after they have left their employment, not by asking the court to extend the general equitable doctrine to prevent breaking confidence beyond all reasonable bounds. ”

It is clear from Faccenda Chicken and other cases that, underlying those rules, are the policy considerations of, on the one hand, protecting from unauthorised use or disclosure confidential information acquired by the employee during the course of the employment, and, on the other hand, enabling employees to earn their living by making use of the body of skill, knowledge and experience which they have acquired in the course of their careers.

Although the issue whether or not Mylan’s in-house patent attorney acquired the relevant information during her employment by Teva as a fiduciary lies at the heart of this appeal, there was very little analysis in the submissions as to the correct legal approach to be taken by the Court to determine that issue. We were referred on that point to Helmet Integrated Systems Ltd v. Tunnard [2006] EWCA Civ 1735, [2007] FSR 16. In that case the claimant, which manufactured protective helmets for fire fighters and other emergency service personnel, claimed that the defendant, whom it had employed as a sales person, breached a fiduciary duty and a duty of good faith in making preparations to set up in competition in respect of a new modular helmet which he had conceived while still employed by the claimant and which he successfully marketed through his own company after leaving the claimant. The Court of Appeal held that there had been no breach of his duty of loyalty and good faith or of any fiduciary duty. Moses LJ, with whom the other two judges agreed, identified (at [33] and [37]) that the essence of the obligation of an employee as a fiduciary is that the employee must act solely or exclusively in the interest of the employer. He took the test from the decision of Elias J in University of Nottingham v Fishel [2000] EWHC 2221 (QB), [2000] ICR 1462. He quoted the following statement of Elias J:

“…in determining whether a fiduciary relationship arises in the context of an employment relationship, it is necessary to identify with care the particular duties undertaken by the employee, and to ask whether in all the circumstances he has placed himself in a position where he must act solely in the interests of his employer. It is only once those duties have been identified that it is possible to determine whether any fiduciary duty has been breached ...”

Moses LJ contrasted that fiduciary duty of exclusive loyalty with the employee’s duty of fidelity, which does not prevent the employee, once the employment has ended, competing against the former employer and applying for his or her own benefit skills, knowledge and information acquired during the course of the employment, provided such information cannot properly be described as a trade secret: see Helmet Integrated Systems at [26] and [27] and [37].

On the facts Moses LJ accepted (at [42] to [46]) that, having regard to the express terms of the defendant’s contract of employment, he would have had an obligation as a fiduciary not to misuse for his own benefit or for the benefit of someone other than the claimant information about the activities of a competitor learned while he was employed by the claimant as a salesman. Moses LJ said (at [45]) that was because his employer would have no control over how he deployed what he had learned as a salesman, and would be dependent on him to pass on the information. Moses LJ said (at [47]) that the defendant was, however, under no obligation to report his own activities because, first, the words of the defendant’s job specification did not restrict his freedom to prepare for competition on leaving, and, secondly, the defendant was under no relevant fiduciary obligation to the plaintiff.

We were referred to two cases in which former employers had unsuccessfully applied to the Court for orders restraining former employees from carrying out certain work for their new employers (which I shall refer to as “barring orders”). In PCCW-HKT Telephone Ltd v Aitken [2009] 2 HKLRD 274 the first defendant was a solicitor admitted in Australia but not in Hong Kong, who had been employed in Hong Kong by the plaintiff, the largest fixed network operator in Hong Kong, as General Manager, Regulatory Compliance. He then joined the second defendant, the largest mobile network operator in Hong Kong, as the head of Regulatory and Corporate Affairs. The plaintiff claimed injunctions to restrain the first defendant from, among other things, having any involvement in certain issues relating to fixed-mobile interconnection charges. The Hong Kong Final Court of Appeal dismissed an appeal from the refusal of the first instance judge to grant that barring order. The principal judgments were delivered by Ribeiro PJ and Lord Hoffmann NPJ, with both of whom the other justices agreed. Both Ribeiro PJ and Lord Hoffmann contrasted the position of employees regarding confidential information with that of solicitors. Lord Hoffmann said:

“61.

There is a very considerable difference between the position of a solicitor and an employee, even though the confidential information which they have obtained may be the same. The solicitor will normally have many clients and will not be dependent upon one for his livelihood. Even if the new client is important to him, he does not have to act for him in a matter in which he previously acted for the other side. The employee can have only one employer at a time and, in the nature of things, his new employer is likely to be in the same line of business and therefore in competition with the previous one. I therefore see no reason of logic or policy which requires the special remedy against solicitors to be extended to employees who have information which would be protected by [legal professional privilege].

63.

… In the absence of an enforceable covenant, the courts do not interfere with the new activities of former employees. There is no case in which they have done so. Former solicitors (or forensic accountants) are different …”

The plaintiff’s claim in that case that the first defendant was in a position analogous to that of a solicitor was rejected on the facts since he offered the second defendant no legal advice whatever. Ribeiro PJ expressly left open questions concerning possible relief against an in-house lawyer who changes jobs to take up a position on the other side of a contentious issue, or against a person who moves from employment as an in-house lawyer to private practice as a solicitor (or vice-versa) to act on the other side of a contentious matter.

A similarly hostile reaction to an application for a barring order against a former employee, in the absence of a restrictive covenant, was taken by the Court of Appeal in the very recent case of Caterpillar Logistics Services (UK) Limited v Huesca de Crean [2012] EWCA Civ 156. The defendant had previously been employed by the defendant (“CLS”) as an accountant. Her contract of employment did not contain a restrictive covenant. The Court of Appeal dismissed an appeal by CLS from the judge’s refusal of injunctions (both interlocutory and final) to prevent the defendant from disclosing certain information to her new employer and carrying out certain tasks for her new employer. The claimant’s case for a barring order was based on the submission that the defendant had been a fiduciary of CLS and the principles in Bolkiah applied.

Stanley Burnton LJ said (at [49]) that there was nothing in Lord Millett’s speech in Bolkiah “to justify the extension of the relief granted in that case … to the ordinary relationship of employer and employee”, and that the principle for which Bolkiah is authority “is confined to solicitors and the like”. He observed (in [51]) that Bolkiah was applied by Floyd J in the present case to a patent attorney, and added that “patent attorneys share many of the characteristics of a litigation solicitor”. He referred to PCCW and quoted from the judgments in that case, including the passages in the judgment of Lord Hoffman set out above. He said (at [58]) that the relationship between an employer and an employee is neither a fiduciary relationship nor a confidential one. He quoted parts of the judgment of Elias J in Fishel to the effect that the employment relationship “is not a fiduciary relationship in the classic sense”.

Stanley Burnton LJ then gave his reasons for rejecting CLS’ claim to a barring order, the first two of which were as follows.

“60.

… The first [reason] is that as an employee she was not a fiduciary such as to be amenable to the jurisdiction to grant such relief. Clearly, the Court has power to grant such relief, but if it could ever be granted to an employer against an employee it could only be in the most exceptional circumstances, if at all. There is nothing exceptional in this case.

61.

The second reason is that this was not the relief for which CLS contracted. It could have required the respondent to enter into an express covenant not to enter the employment of a customer (or a competitor). Any such covenant would have had to be limited in time and reasonable as between the parties and in the public interest: it would have been a covenant in restraint of trade. It did not seek such a covenant, but instead obtained from the respondent her agreement in respect of its confidential information. …”

He quoted the passage in the judgment of Cross J in Printers & Finishers Ltd cited in Faccenda Chicken (set out above), and then quoted the following passage in the judgment of Scott J in Balston Ltd v. Headline Filters Ltd [1987] FSR 330 at 351:

"Employers who want to impose fetters of this sort on their employees ought in my view to be expected to do so by express covenant. The reasonableness of the covenant can then be subjected to the rigorous attention to which all employee covenants in restraint of trade are subject."

Stanley Burnton LJ continued:

“64.

In my judgment, it is no answer to say, as Mr [Selwyn] Bloch [counsel for CLS] did when the point was put to him, that it is not the practice for employers to contract for express covenants to prevent employees going to work for their customers. It seems that CLS was sufficiently concerned to protect its confidential information to require the respondent to enter into the confidentiality agreement, and it presumably designed that agreement to provide it with appropriate protection. Mr Bloch's answer is particularly inapt on the facts of the present case, where the respondent had left the employment of one of CLS’s customers in order to work for it. Clearly, there was a possibility that she might return to work for that or some other customer. ”

He concluded, on the application for a barring order, as follows:

“65.

To my mind, it is not surprising that barring-out relief is unavailable in the present case. Mr Bloch accepted, as he had to, that the barring-out injunction sought by CLS would preclude the respondent from carrying out tasks in relation to the LSA that could not possibly involve the use of any of its confidential information. Placing an order, and raising a query as to delivery of spare parts to a customer of QH, are only two obvious examples. Mr Bloch submitted that if some of the work carried out by the respondent was innocent in this sense, but other work carried the risk of the misuse of CLS’s confidential information, the respondent should be injuncted from both. In my judgment, this is the wrong way round. As between an employer and an employee, it is the former who is in the position of power, and who is able to protect its interests by requiring a suitable restrictive covenant. The law is concerned to protect the freedom of a former employee to use her knowledge and skills to her and the public's best advantage, unless it is shown that she has infringed, or has threatened to infringe, an enforceable right of her former employer. In other words, where the employee is innocent, in the absence of an express covenant, the former employer is not entitled to surround his rights with a penumbra of forbidden but innocent acts.”

Both Lewison and Maurice Kay LJJ agreed with Stanley Burnton LJ on that issue.

It is difficult to extract from these cases a clear and consistent approach to the application of equitable principles for protecting confidential information in the context of a contract of employment. That lack of clarity is reflected in the submissions that were made to the Judge in the present case, leading him to conclude that “the rule in Bolkiah applies to anyone in possession of confidential information”. That is plainly not correct, as was recognised in the way this appeal has been argued, with a major issue being whether or not Mylan’s in-house patent attorney received the relevant information as a fiduciary of Teva while in Teva’s employment. The lack of clarity is also reflected in the fact that the analysis in Faccenda Chicken was purely on the contractual position, and there was no mention of equitable principles arising out of a fiduciary relationship between employer and employee; there was no mention of Faccenda Chicken in Bolkiah or Fishel; there was no mention of Bolkiah in Helmet Integrated Systems; and in Caterpillar there was omitted (it would appear deliberately, consistent with the concluding observations of Stanley Burnton LJ) the part of Elias J’s judgment in Fishel in which he set out the test for establishing whether an employee was acting as a fiduciary and which was applied in Helmet Integrated Systems.

It is appropriate to begin the analysis of the correct approach with some very basic observations. The first is that, in the absence of a contract, equity will in appropriate circumstances protect the disclosure of information given in confidence: Seager v Copydex Ltd [1967] 1WLR 923. Secondly, in the case of a contract of employment, and subject to any express terms, Faccenda Chicken lays down the principles as to the extent and nature of the employee’s contractual duty not to use or disclose confidential information during the employment and after it has terminated. Those principles reflect, as I have said, a compromise of policy considerations as to the protection of both the employer, on the one hand, and the employee, on the other hand. Thirdly, if a person receives any information as a fiduciary for another, the information is held solely for the benefit of the beneficiary, unless the terms of the fiduciary relationship are qualified in some relevant way.

The complication that has arisen in this field, since the Court of Appeal laid down the clear contractual principles in Faccenda Chicken, is the idea that those contractual principles are overridden by fiduciary obligations arising during employment and that those obligations are materially different from the implied contractual obligations elucidated by the Court of Appeal in that case. It is possible to identify at least three sources for that idea, which together and separately have caused confusion.

Firstly, Lord Millett, writing extra-judicially, has said that there are at least three distinct categories of fiduciary relationship which possess different characteristics and which attract different kinds of fiduciary obligation: “Equity’s place in the law of commerce” (1998) Vol. 114 LQR 214. The first, which he said is the most important, is the fiduciary relationship of trust and confidence. The second is the fiduciary relationship arising from influence, of which the defining characteristic is the vulnerability of one of the parties. The third is what he described as “the relationship of confidence”. He said that this third category of fiduciary relationship arises whenever information is imparted by one person to another in confidence. He said these different relationships may co-exist between the same parties at the same time. He gave as an example the solicitor and client relationship: it arises from a contract of retainer giving rise to a common law duty of skill and care, but at the same time it is a fiduciary relationship of trust and confidence, a fiduciary relationship of influence, and a relationship in which confidential information is entrusted to the solicitor in the course of a fiduciary relationship to be used for the benefit of the client and not the solicitor. Lord Millett said:

“There is a common thread to the fiduciary obligations to which these different fiduciary relationships give rise. It is the principle that a man must not exploit the relationship for his own benefit. This is what distinguishes a fiduciary relationship from a commercial one. What distinguishes the role of equity from that of the common law is that equity is proscriptive not prescriptive. It forbids the fiduciary to act for himself. It does not tell him what to do for his principal. And if, in breach of his fiduciary duty, he does act for himself, he is treated as if he had acted for his principal. In consequence, the remedies which equity makes available are very different from those which may be obtained at common law.”

Lord Millett did not address in those comments, or elsewhere in the article in which they were made, an employee’s obligation of confidence. He did not mention Faccenda Chicken or the principles and policy considerations which were considered in it. His broad observation that a fiduciary relationship of confidence arises whenever information is imparted by one person to another in confidence plainly does not apply without qualification to a relationship of employer and employee since that would entirely undermine the fundamental distinction in Faccenda Chicken between the former employee’s obligation to maintain the confidentiality of trade secrets, on the one hand, and his or her right to use or disclose other confidential information, on the other hand. It is also clear that the example he gives of the fiduciary obligations arising in the relationship between client and solicitor was in the context of the retainer of a solicitor in private practice.

Secondly, Elias J’s decision in Fishel, which was the source of the fiduciary test approved by Moses LJ in Helmet Integrated Systems, was based on the analysis in Lord Millett’s article. In Fishel the claimant university sought an account of profits, or alternatively damages, for alleged breaches of fiduciary duties and breaches of contract by the defendant, a distinguished scientist employed by the university, who had earned substantial sums from sources of work outside the university. Elias J found on the facts that the defendant was liable both for breach of contract and for breach of fiduciary duty. It was not a case about the wrongful use or disclosure of confidential information. In order to resolve the allegation of breach of fiduciary duty, however, Elias J subjected the employer and employee relationship to a penetrating and impressive analysis. Having referred to Lord Millett’s article, he said that Lord Millett’s second and third categories of fiduciary relationship were not relevant to the case before him. As to the third category, the receipt of confidential information, he nevertheless observed as follows:

“Employees frequently fall into this latter category, because their work will often involve their being made privy to trade or business secrets of their employer. But although the existence of the employment relationship explains why the employee comes to be in possession of such information, and the contract of employment will define the purposes for which such information may be used, the employment relationship itself in such cases is really only incidental to the imposition of the fiduciary duties. As the Court of Appeal noted in A-G v Blake [1998] Ch.439 this fiduciary obligation of confidence often arises in the course of another fiduciary relationship but it is not derived from it. It is for this reason that the obligation of confidence can continue to subsist even when the employment relationship, and any fiduciary duties arising out of it, has terminated.”

Elias J did not refer anywhere, however, to Faccenda Chicken or seek to resolve how the analysis in that case could be reconciled with what he considered would be the normality of an employee’s enduring fiduciary position regarding all confidential information received by the employee regardless of the degree of secrecy or confidentiality involved.

The principal part of Elias J’s judgment was devoted to exploding the widely expressed, but plainly mistaken, view that the ordinary relationship between employer and employee is a fiduciary relationship. His invaluable analysis in that regard focused on the identification of the duty to act in the interests of another as “the fundamental feature which, in [Lord Millett’s first] category at least, marks out the relationship as a fiduciary one”. In that connection he said as follows:

“The employment relationship is obviously not a fiduciary relationship in the classic sense. It is to be contrasted with a number of other relationships which can readily and universally be recognised as "fiduciary relationships" because the very essence of the relationship is that one party must exercise his powers for the benefit of another. Trustees, company directors and liquidators classically fall into this category which Dr. Finn, in his seminal work on fiduciaries, has termed "fiduciary offices". (See P.D Finn, ""Fiduciary Obligations" (1977)). As he has pointed out, typically there are two characteristics of these relationships, apart from duty on the office holder to act in the interests of another. The first is that the powers are conferred by someone other than the beneficiaries in whose interests the fiduciary must act; and the second is that these fiduciaries have considerable autonomy over decision making and are not subject to the control of those beneficiaries.

By contrast, the essence of the employment relationship is not typically fiduciary at all. Its purpose is not to place the employee in a position where he is obliged to pursue his employer's interests at the expense of his own. The relationship is a contractual one and the powers imposed on the employee are conferred by the employer himself. The employee's freedom of action is regulated by the contract, the scope of his powers is determined by the terms (express or implied) of the contract, and as a consequence the employer can exercise (or at least he can place himself in a position where he has the opportunity to exercise) considerable control over the employee's decision making powers.

This is not to say that fiduciary duties cannot arise out of the employment relationship itself. But they arise not as a result of the mere fact that there is an employment relationship. Rather they result from the fact that within a particular contractual relationship there are specific contractual obligations which the employee has undertaken which have placed him in a situation where equity imposes these rigorous duties in addition to the contractual obligations. Where this occurs, the scope of the fiduciary obligations both arises out of, and is circumscribed by, the contractual terms; it is circumscribed because equity cannot alter the terms of the contract validly undertaken. …

The problem of identifying the scope of any fiduciary duties arising out of the relationship is particularly acute in the case of employees. This is because of the use of potentially ambiguous terminology in describing an employee's obligations, which use may prove a trap for the unwary. There are many cases which have recognised the existence of the employee's duty of good faith, or loyalty, or the mutual duty of trust and confidence - concepts which tend to shade into one another. As I have already indicated, Lord Millett has used precisely this language when describing the characteristic features which trigger fiduciary obligations. But he was not using the concepts in quite the same sense as they tend to be used in the employment field. Lord Millett was applying the concepts of loyalty and good faith to circumstances where a person undertakes to act solely in the interests of another. Unfortunately, these concepts are frequently used in the employment context to describe situations where a party merely has to take into consideration the interests of another, but does not have to act in the interests of that other.

….

Accordingly, in analysing the employment cases in this field, care must be taken not automatically to equate the duties of good faith and loyalty, or trust and confidence, with fiduciary obligations. Very often in such cases … there has been no need to decide whether the duties infringed, properly analysed, are contractual or fiduciary obligations. As a consequence, the two are sometimes wrongly treated as identical…

Accordingly, in determining whether a fiduciary relationship arises in the context of an employment relationship, it is necessary to identify with care the particular duties undertaken by the employee, and to ask whether in all the circumstances he has placed himself in a position where he must act solely in the interests of his employer. It is only once those duties have been identified that it is possible to determine whether any fiduciary duty has been breached …

It follows that fiduciary duties may be engaged in respect of only part of the employment relationship …”

As I have said, that was the approach which Moses LJ took in Helmet Integrated Systems. It does not, however, seem to have found favour with the Court of Appeal in Caterpillar, which appears to have shown a general reluctance to colour the employee as a fiduciary in any respect.

The Court of Appeal in Attorney-General v Blake [1998] Ch 439, to which Elias J referred in Fishel, expressed in its single judgment in remarkably expansive terms the view that the relationship between an employer and an employee is a fiduciary one: page 454B. It also said that a fiduciary relationship of confidence arises whenever information is imparted by one person to another in confidence, “often, perhaps usually, imparted in the course of another fiduciary relationship such as that of employer and employee”, and that, if so, the duty will survive the termination of the other relationship, for it is not derived from it: page 454 F. Once again, there was no reference to Faccenda Chicken in the judgment of the Court of Appeal. For the reasons given by Elias J in Fishel the statement that the relationship between employer and employee is a fiduciary relationship cannot be correct. No authority was cited by the Court of Appeal for the observation that, whenever information is imparted in confidence to an employee in the course of employment, it is held by the employee as a fiduciary.

The third source for the idea that the implied contractual obligations of an employee with regard to confidential information are overlain by fiduciary duties which are more extensive than the contractual ones set out in Faccenda Chicken is the Bolkiah case itself. Bolkiah has given rise to the argument that, if an employee has acquired information in a previous employment as a fiduciary, a barring order, such as that obtained in Bolkiah, can be obtained even in the absence of a restrictive covenant circumscribing the employee’s activities after termination of the employment. It has also given rise to the argument (which was run but failed on the facts in PCCW) that, if a person such as a solicitor or a patent attorney would have been a fiduciary and subject to fiduciary duties if acting pursuant to a retainer while in private practice, then they should be similarly regarded if employed to carry out the same functions. The policy considerations applying to the use or disclosure of a former client’s confidential information by the client’s former solicitor (or others, like forensic accountants falling to be treated in the same way as solicitors) in private practice are, however, very different to those applying between employer and employee. As Lord Hoffmann observed in PCCW in the passage I have quoted above, the solicitor in private practice will normally have many clients and can pick and choose for which of them to act. By contrast, employees, including an employed solicitor (and others in a like position) are contractually bound to a single employer and, in the course of their career will need to take with them the knowledge, skill and experience acquired in the course of that career so as to perform similar tasks for each new employer.

Arguments have also been raised, in the present case as in others, that comments of Lord Millett in Bolkiah (eg at pp. 234C and 236H) show that one of the reasons why solicitors, including employed solicitors, owe fiduciary duties in respect of confidential information is because communications between solicitors and their clients or employers enjoy legal professional privilege. The point is relevant on the facts of the present case because communications between patent attorneys and their clients or employers are also privileged from disclosure in legal proceedings: Copyright, Designs and Patents Act 1988 s. 280 (as amended). There is, however, no connection between the public policy underlying legal professional privilege and the issue of whether and when an employed solicitor or a patent attorney owes fiduciary duties to the employer. The argument to the contrary was rightly roundly rejected in PCCW. In that case counsel for the claimant sought to argue that legal professional privilege was of such importance that it trumps all other policies, including those against restraint of trade and in favour of freedom of employment. In rejecting the argument, Lord Hoffmann said as follows:

“37.

I am unable to accept this argument. The cases which characterise legal professional privilege as absolute and as a predominant public interest are concerned with maintaining the inviolability of privileged communications against competing policies in favour of compulsory disclosure of the relevant information. Such issues are not engaged in the present case. No one is suggesting that Mr Aitken is entitled or can be compelled to divulge or use for CSL’s benefit PCCW’s privileged information to which he is privy. The respondents accept that they must abide by the Judge’s orders against any disclosure or misuse. This appeal is concerned with the nature and scope of the relief available to PCCW to maintain the confidentiality of information acquired by Mr Aitken as a former employee, an area where the policy against restraint of trade is of central importance. Since issues concerning compelled disclosure of privileged information do not arise, there is no conflict with that policy and no question of it being “trumped” by policies sustaining the high importance of legal professional privilege.

It is possible to find a way through this thicket of confusion. Firstly, at the level of the Court of Appeal, it is necessary to accept that the receipt of confidential information by an employee in the course of employment gives rise to fiduciary duties by the employee in respect of the use and disclosure of that information. Attorney-General v Blake is Court of Appeal authority to that effect notwithstanding that the relationship of employer and employee was incidentally incorrectly described in that case as a fiduciary one.

Secondly, however, and critically, the nature and scope of the fiduciary obligations are coloured and restricted by, that is to say they must reflect, the contract between the employer and the employee. In the well-known statement of Mason J in the High Court of Australia in Hospital Products Ltd. V United States Surgical Corporation (1984)156 CLR 41 at 97:

"That contractual and fiduciary relationships may co-exist between the same parties has never been doubted. Indeed, the existence of a basic contractual relationship has in many situations provided a foundation for the erection of a fiduciary relationship. In these situations it is the contractual foundation which is all important because it is the contract that regulates the basic rights and liabilities of the parties. The fiduciary relationship, if it is to exist at all, must accommodate itself to the terms of the contract so that it is consistent with, and conforms to, them. The fiduciary relationship cannot be superimposed upon the contract in such a way as to alter the operation which the contract was intended to have according to its true construction."

Thirdly, accordingly, the implied contractual terms as to the disclosure and use of confidential information by an employee elucidated by the Court of Appeal in Faccenda Chicken also define the extent of the employee’s fiduciary obligations. This means that the fiduciary duties arising from receipt of the confidential information in practice add nothing to the contractual duties except in relation to remedies. Subject to the express terms of the contract of employment, fiduciary duties, like the implied contractual duties, extend during the currency of the employment to all the confidential information received by the employee, but, after the employment has terminated, the fiduciary duties continue to extend only to information that carries a sufficiently high degree of confidentiality to amount to a trade or business secret. In the case of employed solicitors, and others in a like position, the nature of their work may mean that a higher proportion than usual of the information they receive falls into the latter category. One important difference between the contractual position and the fiduciary position is in relation to remedies. Although the speeches of the House of Lords in Attorney-General v Blake [2001] 1 AC 268 and the judgments of the Court of Appeal in Experience Hendrix v PPX Enterprises Inc [2003] EWCA Civ 323 show that an account of profits may be awarded for breach of contract in exceptional circumstances, an account of profits is a conventional remedy for breach of fiduciary duty.

Fourthly, so far as concerns a barring order, there is no good reason to import into the employment field and to place on the former employee the Bolkiah evidential burden of proving the absence of any real risk of disclosure. On the contrary, there are good reasons not to do so. There is a long-established line of authority that, if an employer wishes to restrict the activities of an employee after termination of the employment, that should be done by a legally valid restrictive covenant. This is because the employee must know with certainty what it is that the employee will be able to undertake for any new employer or otherwise in furtherance of the employee’s career; and any new employer will want to know the same; the employee is entitled to deploy in furtherance of his or her career the general experience, skill and knowledge acquired in the course of it; and it may be, and probably will be, difficult to disentangle in relation to any new employment or other career activity protected confidential information, on the one hand, and other information which it is lawful for the former employee to use or disclose, on the other hand. These are the inevitable consequences of an employee pursuing a career in which the same tasks are carried out and skills are deployed in successive employments. They apply as much to an employed solicitor or, for that matter, an employed patent attorney as to any other employee.

That is not to say that a barring order can never be made against a former employee if the former employer proves that trade or business secrets (or, in the case of a legally valid express term, other confidential information), which are subject to continuing contractual and fiduciary duties after termination of the employment, are likely to be disclosed or wrongly used by the former employee. For the reasons I have just given, however, in the absence of a restrictive covenant that can only be in a most exceptional case. Depending on the precise facts, it might apply in the type of case to which Ribeiro PJ referred in PCCW, such as an employed solicitor acting in a sensitive and confidential role for the employer on a currently contentious matter and then taking up a position in a similar capacity working for the other side on the same contentious matter.

It follows that, in my judgment, although quite understandable in view of the way the matter was argued before him, the Judge in the present case was wrong to conclude that, merely because the relevant information was confidential and privileged, and there was a risk that the information might be disclosed or wrongly used by Mylan’s in-house patent attorney, a barring order should be made against her.

On the facts of the present case, the relevant information was not sufficiently secret or confidential to amount to a trade or business secret in the Faccenda Chicken sense. Unlike the position in that case, however, the obligations of Mylan’s in-house patent attorney to respect and maintain confidentiality do not turn on implied terms of her contract of employment. Her contract of employment contained the following express provision, so far as relevant:

“You will not during your employment or at any time afterwards, save where authorised by an Executive Director, divulge or communicate, use or misuse any confidential information of the Employer obtained by virtue of your employment. You acknowledge that confidential information shall include, but is not limited to, lists or details of clients, employees or suppliers, details of contractual agreements, prices, commercial relationships or information concerning the business accounts, affairs, methods or finances of the employer.”

In view of the second sentence in that clause it is clear that, as a matter of interpretation, the expression “confidential information” in the clause is not confined to trade or business secrets in the Faccenda Chicken sense. In Mylan’s confidential supplementary skeleton argument it was submitted that the clause is an unlawful restraint of trade, at least insofar as it seeks to protect for an unlimited time and without any geographical restriction the confidentiality of information which is not a trade or business secret in the Faccenda Chicken sense. The point was not addressed in any detail, however, in oral submissions, probably because the time allowed for the hearing of the appeal was manifestly too short. In view of the general importance of the point, the lack of full oral submissions on it, and the existence of other grounds for allowing the appeal, I shall not express my view on the point. I shall proceed on the assumption that Mylan’s in-house patent attorney’s employment contract with Teva protects the relevant information from disclosure even after the termination of her employment with Teva if the information is confidential.

Mylan’s in-house patent attorney had no responsibility for any Copaxone related oppositions or litigation while working Teva. The Judge referred to two email chains on which the respondents rely as containing or connected with confidential information received by Mylan’s in-house patent attorney and justifying the barring order against her. The Judge made no finding on the confidentiality of the information to which one of those email chains related. The confidentiality of the information to which the other email chain related may fairly be described as exiguous, at best. Like Jacob LJ, I have set out in a Confidential Appendix my detailed assessment of the confidentiality of the relevant information.

What is clear is that a mere suspicion on the part of the Judge that “[Mylan’s in-house patent attorney’s] memory of [the relevant information on which the respondents rely] may be at the back of her mind and may … unconsciously … in fact influence her strategy and conduct and the consequent instructions she gives in the case” falls well short of satisfying the burden on Teva to prove a real risk that the information would be used or disclosed by Mylan’s in-house patent attorney in connection with her role in the conduct of these proceedings.

Moreover, the effect of the injunction would be to prevent Mylan’s in-house patent attorney carrying out perfectly lawful activities for Mylan, and using her general skill and knowledge as a patent attorney in her current employment. This is not an exceptional case in which, in the absence of a restrictive covenant, it would be right to make a barring order against an employee.

For all those reasons I would allow this appeal.

This appeal arises out of a claim brought early in 2011 by Generics (UK) Ltd (“Generics”) for the revocation of, and a declaration of non-infringement of, the European Patent of a product (Copaxone used in the treatment of multiple sclerosis) marketed by Teva Pharmaceutical Industries Ltd (“Teva”) under an exclusive licence from Yeda Research and Development Company Ltd (“Yeda”). In the course of that action Generics applied on 15th November 2011 for an order that it be permitted to provide its Director of Intellectual Property, with copies of documents disclosed by Yeda and Teva which had been designated as confidential.

Mylan’s in-house patent attorney was formerly employed by Teva. She is a chartered United Kingdom and European patent attorney and patent attorney litigator. From 2008 until February 2011 her work for Teva gave her responsibility for European oppositions. In February 2011 she joined Generics where she took responsibility for managing its European patent matters, including litigation, oppositions and prosecutions with respect to a portfolio of products. She became the person charged with the day-to-day management of the Copaxone litigation in the United Kingdom. She was the only internal member of Generics’ Copaxone litigation team in the United Kingdom and was the person most familiar with the matter in this jurisdiction.

The defendants, Yeda and Teva, objected to these confidential documents being disclosed to her, contending that during the course of her employment with them, she had become privy to confidential information concerning or potentially concerning the Copaxone litigation. They accordingly applied on 21st November 2011 for an order that Generics should cease to act by, or otherwise seek assistance or advice from, its Director of Intellectual Property, Mylan’s in-house patent attorney, in relation to that action. On 25th November 2012 Floyd J. granted that order.

Floyd J. held that he should approach the application in accordance with the principles established by Prince Jefri Bolkiah v KPMG [1999] 2 A.C. 222. His conclusion was:

“26.

I have not found this an altogether easy question to decide, but I have reminded myself that the threshold is not a particularly high one. It seems to me that communications of this type which I have considered are by their very nature confidential and privileged. The communications are not central to the litigation with which this court is concerned, though they are, I think, relevant to it. I think there is a risk in the present case that if [Mylan’s in-house patent attorney] continues to act on behalf of Generics her memory of events such as those to which I have referred … may be at the back of her mind and may, I suspect unconsciously, nevertheless in fact influence her strategy and conduct and the consequent instructions she gives in this case.”

That finding is under attack in this appeal. Like Etherton L.J., I agree with Sir Robin Jacob that the alleged confidential information was at most peripheral to the Copaxone litigation. There was, moreover, no real risk of misuse of that information. Having come to a firm conclusion about that which is dispositive of this appeal, I was ready to agree and did agree at the end of the oral hearing before us that the appeal should be allowed. We informed the parties we would give our reasons in writing later.

Since the respondents failed to prove that Mylan’s in-house patent attorney was in possession of any relevant confidential information I would not, for my part, wish to go any further. I am, therefore, most reluctant to adjudicate between the characteristically forceful common sense judgment of Sir Robin Jacob (who concludes that the Bolkiah principles apply to a former employed litigator as they do to a former privately engaged litigator) and the characteristically erudite judgment of Etherton L.J. (who holds that the Bolkiah rules do not apply to such employees). My reluctance is compounded by the fact that, given the urgency with which the matter was listed before us, time was restricted and counsel did not have the opportunity to marshal their arguments to cover the wide ground exposed by Etherton L.J. My views must, therefore, be taken as tentative at best. Taking a very broad view I share the concerns expressed by Etherton L.J.

I believe we would all agree that a solicitor, whether a former in-house lawyer or even an assistant in private practice, who is in possession of highly confidential information about his former employer or a client of his former firm, would be restrained from acting against the interests of the employer/client. That injunction would be granted whether one applied Bolkiah or relied on Faccenda Chicken Ltd v Fowler [1987] 1 Ch. 117. The difference between the two approaches has significance only at the margins. In a finely balanced case the burden of proving the real risk of harm of disclosure shifts to the solicitor in the Bolkiah case. That could be of vital importance. Take the present case: how can Mylan’s in-house patent attorney show that she will not even subconsciously use confidential information when she genuinely does not know she has any confidential information to disclose? Given that we should not generate a modern state of commercial slavery (especially for young solicitors keen to advance their careers by changing jobs) I feel obliged to express my views, tentative though they may be.

The first question is whether a patent attorney can be equated with a solicitor. I have no problem in agreeing that the patent attorney stands in the same position as a solicitor and that, therefore, an employed in-house patent attorney must be treated the same as an employed in-house solicitor.

The next question is whether an employed solicitor (and henceforth I embrace patent attorneys with solicitors) is in the same position as a solicitor in private practice. (Perhaps the better way of elucidating the problem that troubles me is to ask whether a solicitor in private practice is in the same position as an employed in-house solicitor.) I accept that for some and perhaps for most purposes they are equal. I cannot and I do not dispute that:

“They [salaried legal advisers] are regarded by the law as in every respect in the same position as those who practice on their own account. The only difference is that they act for one client only, and not for several clients. They must uphold the same standards of honour and of etiquette. They are subject to the same duties to their client and to the court. They must respect the same confidences. They and their clients have the same privileges.”

So said Lord Denning M.R. in Crompton Ltd v Customs & Excise Commissioners [1972] 2 Q.B. 102, 129. But I respectfully venture to think that those observations must be seen in context. The issue there was a narrow one: could legal professional privilege be claimed for bundles of documents consisting of communications between the Commissioners and their legal department. The case draws the distinction between work done by a legal adviser which is of an executive nature which is not the subject of legal professional privilege and work done qua solicitor which must be treated as such.

Our case involves much wider issues than privilege: specifically, but narrowly, can the former employer bar a former in-house solicitor from acting against it? The judgments of my Lords give rise to wider questions: is the position of the solicitor different depending upon whether he is (1) an in-house solicitor employed by a commercial organisation, or (2) a partner in a firm of solicitors in private practice or, at a further remove, (3) an employed assistant solicitor who is not a member of the firm which is retained by the client whose confidential information is at risk. There are obvious differences between them. The essential nature of the relationship between the in-house solicitor and his employer is that of employer-employee and is governed by the terms of their contract of employment. The relationship between the solicitor’s firm and its client is established by the terms of the retainer but it is a special relationship from which fiduciary duties flow. The assistant solicitor is an employee of the firm bound by the terms of his contract of employment but he has no contractual relationship with the clients of the firm. He may – or he may not – be clothed with the same fiduciary duties to the client as are owed by the firm quite apart from fiduciary duties owed to the firm. Overarching all of this are the professional responsibilities which all solicitors are bound by their professional codes of conduct to observe.

When the employed solicitor gives advice to or conducts litigation for the commercial organisation which employs him, he may be conducting himself as a solicitor (because that is what he is employed to do) but is advising his employer, not his client, and is conducting proceedings for his employer, not for a client. He may be acting as a solicitor with all the duties and responsibilities that flow from his so-acting, but the employer is not truly his client. He is bound by a contract of employment, not by the terms of a retainer. That contract is, therefore, to be the primary source of the obligations which the employer wishes to impose on his employee, including in particular, covenants in restraint of trade. How does Bolkiah apply to him? Bolkiah clearly applies to the firm of solicitors and if it applies to the firm I venture to think it applies equally to at least the partner of the firm with conduct of the client’s case. But do the Bolkiah rules apply to an assistant solicitor in that firm when he moves to a firm acting against a client of his former employers? Can the client restrain him from doing his job for his new firm?

What is the rationale for Bolkiah? Although, as Lord Millett says at p.234 G-H, the basis of the court’s jurisdiction to intervene on behalf of a former client is the protection of confidential information, it does not end there. Underpinning Bolkiah is the public interest in the proper administration of justice:

“It is … difficult to discern any justification in principle for a rule which exposes a former client without his consent to any avoidable risk, however slight, that information which he has imparted in confidence in the course of a fiduciary relationship may come into the possession of a third party and be used to his disadvantage. Where, in addition the information in question is not only confidential but also privileged, the case for a strict approach is unanswerable. Anything less fails to give effect to the policy on which legal professional privilege is based. It is of overriding importance for the proper administration of justice that a client should be able to have complete confidence that what he tells his lawyer will remain secret. This is a matter of perception as well as substance. It is of the highest importance to the administration of justice that a solicitor or other person in possession of confidential and privileged information should not act in any way that might appear to put that information at risk of coming into the hands of someone with an adverse interest:” per Lord Millett at p. 236H.

(I have added the emphasis because it may be the due administration of justice demands the protection of information which is privileged only and that confidential information received by a solicitor which is not also privileged (though it is not easy to see how that distinction could be made) falls outside this protection. I shall assume the ordinary day to day dealings between a solicitor and his employer/client are covered. )

This passage was cited in PCCW-HKT Telephone Ltd v Aitken [2009] 2 HKLRD 274 to support an argument that legal professional privilege was of such importance that it trumps all other policies, including those against restraint of trade and in favour of freedom of employment. Lord Hoffmann was unable to accept that argument. The issue was not engaged in that case because no one was suggesting that Mr Aitken, a solicitor formerly in the appellant’s employment, was entitled or could be compelled to use for his new employer’s benefit privileged information to which he was privy. Lord Hoffmann said at p.288: “Since issues concerning compelled disclosure of privileged information do not arise, there is no conflict with that policy [the policy against restraint of trade] and no question of it being “trumped” by policies sustaining the high importance of legal professional privilege.”

The principle of public policy that any unreasonable restraint of trade is unenforceable is well established. It was authoritatively determined by Lord Macnaghten in the Nordenfelt Case ([1984] A.C. 535, 565), as it is, for the sake of brevity, commonly called:

“The true view at the present time, I think, is this: The public have an interest in every person’s carrying on his trade freely: so has the individual. All interference with individual liberty of action in trading, and all restraints of trade of themselves, if there is nothing more, are contrary to public policy, and therefore void. That is the general rule. But there are exceptions: restraints of trade and interference with individual liberty of action may be justified by the special circumstances of a particular case. It is sufficient justification, and indeed it is the only justification, if the restriction is reasonable –reasonable, that is, in reference to the interest of the parties concerned and reasonable in reference to the interest of the public, so framed and so guarded as to afford adequate protection to the party in whose favour it is imposed, while at the same time it is in no way injurious to the public.”

Herbert Morris v Saxelby [1916] A.C. 688 is the leading authority applying this principle to employer and employee.

Lord Millett in Bolkiah simply cannot be thought to be undermining this rule in any way. The case had nothing to do with the duties of employed solicitors. Lord Millett identified the question in that case to be:

“whether, and if so in what circumstances, a firm of accountants which has provided litigation support services to a former client and in consequence has in its possession information which is confidential to him can undertake work for another client with an adverse interest. The question has become of increased importance with the emergence of huge international firms with enormous resources that operate on a global scale and offer a comprehensive range of services to clients,” (p. 228).

Not allowing KPMG to shield behind a Chinese wall is a far cry from preventing a young employed in-house solicitor, still less, for example, an assistant solicitor in the litigation department of a large firm, advancing his or her career by moving to another employer or another firm. They should be free to move unless their previous employer can justify the restraint upon them: they should not be required to justify their freedom of movement.

If and in so far as there is any tension between the two principles of public policy, and in my view there is, it seems to me that the protection of freedom of employment, being of more general application, should prevail. Giving precedence to freedom of movement and trade should not seriously undermine the administration of justice. If the employer’s contract governs the use (or rather the misuse) of confidential information and includes a legitimate restraint of trade, then so be it. The employer will have availed himself of the opportunity to regulate matters between him and his employee. Outside of the contract and independently of it a duty of confidence may be imposed on an employee simply by virtue of being entrusted with confidential information. If that information is “of a sufficiently high degree of confidentiality as to amount to a trade secret”, per Neill L.J. in Faccenda Chicken Ltd v Fowler [1987] Ch. 117, 136, the duty of confidence continues after the termination of the contract of employment. Given the nature of a solicitor’s duties it is not difficult to see that there may be cases where the former employed solicitor has such vital information that in the interests of the proper administration of justice it will be appropriate for the court to grant an injunction to bar the solicitor from acting in competition with his former employer, or his former employer’s client. In a blatant case of that kind the administration of justice will prevail over the liberty to carry out one’s profession freely. Whether the balance of convenience will tip the scales in favour of the grant of a barring order, draconian as that may be, will, of course, depend on the facts and circumstances of each case.

Thus my instinct is to uphold the liberty to ply one’s trade freely and that leads me to prefer to judge any application by the former employer to bar an employed patent agent or solicitor from taking up or performing a new contract of service with a competitor on conventional employer/employee lines whilst at the same time recognising that protecting the administration of justice may justify the restraint of trade as a “special circumstance” of the case (per Lord Macnaghten) or may make the case exceptional enough to fall outside the general rule espoused in Caterpillar Logistics Services (UK) Ltd v de Crean [2012] EWCA Civ 156. The client of the firm which used to employ the assistant solicitor has no contract on which to rely: the client’s cause of action is for breach of confidence. Good reason should be established to interfere with the liberty to work and so the client should show cause why he is entitled to an order restraining trade. The search for justice should not require a former employed solicitor or an assistant solicitor to prove a negative and show there is no risk that confidential information will fall into the possession of those with an adverse interest to his former employer/client as required by Bolkiah.

I acknowledge this may be a simplistic approach to the problem. Etherton L.J. reaches a similar conclusion in a much more principled way and is very persuasive in doing so. He certainly convinces me that there is “a thicket of confusion” surrounding this topic which, through no fault of counsel, was not fully developed in argument. If Sir Robin Jacob is right, the ramifications for the legal profession as a whole, from partners, assistants and even trainees, are important enough for us to reserve our fully considered judgments for another case and another day when full argument will guide through the thicket.

That said, I am still satisfied that this appeal should be allowed.