Tier I, Tier II, Time for Experts; The Curious Case of Scientific Advisers, Party Expert and Two Tiered Confidentiality Club  – SpicyIP 2025

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On January 8, 2025, the Delhi High Court, presided over by Hon’ble Justice Amit Bansal, delivered a significant ruling in the case of Syngenta Limited and Anr. vs. GSP Crop Science Private Limited (See here). This case pertains to patent infringement concerning two process patents related to the fungicide Azoxystrobin. The Court allowed the Party Expert to be privy to the documents accessed by the Scientific Advisers appointed by the Bench. This case is crucial to understand not only the novel concept of Confidentiality Clubs in the Indian IP Litigation but also the issues with regard to the composition of such clubs and the accessibility of the members to confidential information vis-a-vis independently appointed Scientific Advisor.

Background of the Case

In this case, the plaintiffs, Syngenta Limited and Anr., filed a suit against the defendant, GSP Crop Science Private Limited, alleging infringement of the following patents the Indian Patent No. 278868, titled “Processes for the preparation of AZOXYSTROBIN using DABCO as a catalyst and novel intermediates used in the processes” and Indian Patent No. 271751, titled “Preparation of AZOXYSTROBIN”. The plaintiffs manufacture and market Azoxystrobin under the brand name AMISTAR®.

Interim Injunction and Scientific Advisor Appointment

An interim injunction application (I.A. 2554/2020) was filed by the plaintiffs to restrain the defendant from selling products that allegedly infringe upon the suit patents.

On February 16, 2024, the Court (see here) recorded the parties’ agreement to appoint a Scientific Advisor to assess the infringement claims.

On July 19, 2024, the Court directed, vide an order (see here),  the Director of IIT, Delhi, to appoint a Scientific Advisor and established a Terms of Reference (ToR) for the investigation to be conducted by the Scientific Adviser. The ToR, referred to as the Proposed Consolidated Reference,  included provisions for sample collection, testing protocols, and confidentiality  measures.

This case is important on many  counts: First, in not directing the appointment of a Scientific Adviser who would advise the Bench, a step, much-advised (see here) but not frequent in IP litigation;  and secondly for directing a third party to appoint this scientific adviser (more on this later in the post). Two more interesting issues arose in this case. Indian IP litigation has of late admitted new forms of engagement of concurrent evidence such as the hot-tubbing and the confidentiality club (previously discussed here & here).

In this given case, the Bench approved the formation of a novel creation, i.e., the creation of two such confidentiality clubs, reportedly known as the Tier 1 Confidentiality Club and the Tier 2 Confidentiality Club and clarified who can be members of confidentiality clubs and to what extent they can have access to confidential informations

The Court had previously, not only directed the Director of the IIT, New Delhi to appoint this Scientific Advisor and laid down the specific Proposed Consolidated Reference or the TORs for this Scientific Advisor, but also determined that the cost of the Scientific Advisor was to be borne by both the parties equally. Apart from the supplementary direction that the Scientific Advisor has to be an Expert in the field of Agro-Chem Process Chemistry,  it was also specified that the Scientific Advisor has to submit that he/she had no conflict of interest with the suit proceedings and would assist the court fairly and impartially in term of Rule 13 of the Patents Rules, 2003 (See here).

The initiative of the appointment was taken by the Bench itself (see here) and the parties’ opinions were sought. Further, both the parties agreed to the appointment of the Scientific Advisor who was to assist the Bench in light of the technical complexities in the case and prospectively terms of reference for this appointment were drawn up.

This advisor was appointed under the court’s direction through its order dated July 19, 2024, which instructed the Director of IIT Delhi to nominate a suitable individual for this role of the ‘independent’ Scientific Advisor. Instructing this specific person to appoint a Scientific Advisor could be presumed to have been made vide the terms of reference filed by both the parties.  However, this method of appointment does not fully align with the process established under the Delhi High Court Intellectual Property Rights Division Rules, 2022 (See here). The aforesaid rules emphasize that expert appointments to the disputes should be made through a Panel which may be maintained by the IPD. While delegating the appointment of an expert to another expert vide mutually agreed terms of reference is not legally impermissible, incorporating a standard with regard to this practice of appointment of independent scientific advisor, (one who owes the allegiance to the Bench, but whose cost is borne by the parties) into the existing legal framework of I.P. litigation would help clarify its validity and prevent any future uncertainty among litigants.

The judgment also addresses the remuneration of experts assisting the bench, stating that their fees should be shared equally by the parties, as specified in the court’s order dated July 19, 2024 (see here).

Interestingly, apart from the Scientific Advisor appointed under the direction of the Bench on 19th July, 2024, the case, as mentioned above, already had two Confidentiality Clubs constituted. The composition of them are as follows:

1. Tier-I Confidentiality Club comprising of (i) Scientific Advisor and (ii) up to 2 (two) external counsel of each party; and
2. Tier-II Confidentiality Club comprising of (i) Members of Tier-I Confidentiality Club and (ii) up to 2 (two) party representatives of each party in accordance with Rule 19 of the Delhi High Court Intellectual Property Division Rules, 2022 (See here). It is imperative to mention here that one crucial TOR was that all documents, information, records or samples sought under these TOR were only to be disclosed under the aegis of a two-tier confidentiality club.

Now, one Dr. Alan Whitton, previously on the roll of the plaintiffs, but now working independently, was nominated by the plaintiffs to be a part of the Tier II Confidentiality Club. Dispute arose right at this juncture. The defendants did not want the disclosure of the documents made to the Scientific Advisor, bearing confidential information, to be accessed by this “Party Expert” or a party appointed representative to the confidentiality club. It was argued that disclosure or access of the defendant’s confidential documents to a party resident abroad and to a Tier- II Confidentiality Club representative of the plaintiffs, who is not even under the control of the plaintiffs would result in a high risk of leakage as well as misuse and would be against the protection provided under Section 104A of the Patents Act, 1970 (Regarding whether it is reasonable to require the disclosure of manufacturing or commercial secrets – see here).

The plaintiffs submitted that although Dr. Whitton was co-inventor of the patents in question, he was no longer in the payroll of the plaintiffs, thereby ensuring no prejudice and assuring his independence. As to what purpose Dr. Whitton was to use the information he had access to, he had answered in an affidavit to the Bench that all the information he had accessed shall be utilised for the purpose of analysis and had sworn on record to keep the information confidential.

Court’s Ruling

Justice Amit Bansal made several key observations including the maintainability, wherein the application was held maintainable as it sought enforcement of the mutually agreed ToR.

Thereafter, with regard to the Confidentiality Club structure,  the Court distinguished between Tier-I and Tier-II Confidentiality Club members. It noted that Serial No. 13 of the ToR explicitly allowed Tier-II members to access collected records, while Serial No. 12 (c1 and c2) restricted access to testing protocols to Tier-I members only.

The decision affirms that the confidentiality clubs are an established feature of Indian IP litigation and are here to stay. Additionally, the court answers the questions with regard to the memberships of such clubs and the role it plays vis-a-vis independently appointed scientific advisors.

And, finally the Court rejected the defendant’s blanket claim that all the information shared with the Scientific Advisor, prospectively after his due appointment and visit to the premise of the defendants, should be considered confidential, and allowed Dr. Whitton as Party Representative to have access to the necessary documents collected by the Scientific Advisor in accordance with Serial No. 13 of the ToR.

Analysis of the Case

A key aspect of the ruling pertains to the role of the scientific advisor, whom the court emphasizes should assist the bench (vide the 19th July 20204 order) in resolving complex technical issues arising in the case. This scientific advisor could also interchangeably be called as the expert as per Section 39 of the  Bharatiya Salshya Adhiniyam, 2023, (See here) replacing the erstwhile Section 45 of the Evidence Act 1872 (See here).

The case is also particularly significant as it examines the criteria for membership in Confidentiality Clubs under the Delhi High Court Rules. The court reiterates that members must maintain independence, which is assessed through two key factors. First, the nominated member  must not be on the payroll of the party nominating them. Second, the nominated individual must submit an affidavit affirming their independence.

The judgment also refers to the Delhi High Court’s earlier decision in 2022, i.e., Interdigital Technology Corporation & Ors. v. Guangdong Oppo Mobile Telecommunications Corp. Ltd. (See here), which underscored that Confidentiality Clubs should be composed of external counsel and external experts. In Interdigital, the court emphasized that allowing employees involved in commercial negotiations to access confidential agreements would undermine the very purpose of such clubs. Access to confidential information could provide these employees with an unfair advantage in future negotiations, whether with the same or different parties, and could lead to unintentional disclosure.

Furthermore, Interdigital clarified that in-house employees, including legal managers and general counsel, are bound by their contractual obligations to their employers, which define their operational roles. When a court establishes a Confidentiality Club, it may impose additional conditions that override existing employment terms. As a general practice, in-house employees are excluded from such clubs to safeguard confidential information. Even if in-house legal professionals are permitted access, they are expected to have a clear understanding of court-imposed confidentiality obligations. However, employees directly involved in commercial licensing negotiations are more likely to misuse or inadvertently disclose confidential information. Therefore, excluding such employees is essential to preserving the integrity of the confidentiality framework and protecting third-party information.

Although the case is still ongoing, the order dated January 8, 2025, is significant as it clarifies both the role of Confidentiality Club members, their access to confidential information and the process for their nomination. However,  questions still persist, will the procedure for the appointment of scientific advisers as done in this case be set as the norm or will it open more scope for more debate on the process of appointment of such experts?