Almost invariably, defendants in a patent lawsuit seek to
examine the inventors of the patent or patents in issue. But,
what do you do if an inventor resides in Canada? Generally,
non-Canadian courts are not able to assert personal jurisdiction
over Canadians and, therefore, cannot compel them to give evidence
under oath for the purposes of a lawsuit. If a Canadian
witness does not willingly provide evidence, commission evidence
may be sought via the enforcement of what are called "letters
of request". Essentially, these represent a foreign
court's request that a Canadian court order someone to appear
and be examined under oath.
The enforcement of such requests is a matter of discretion for a
Canadian court and is by no means a slam dunk. Enforcement is
generally granted where both specific legal requirements, and
public policy objectives, are satisfied. It is important to
ensure that letters of request are designed to satisfy such legal
requirements, and it is wise to have a Canadian lawyer help with
their preparation. The legal requirements for enforcement are
generally summarized below.
The examination is authorized by a foreign court
of competent jurisdiction.
The Canadian court has jurisdiction over the
The evidence sought relates to the foreign case. This
means it is important to get into the foreign case and the reason
the witness' evidence is required.
The evidence sought is relevant and necessary, and
cannot be obtained through other means. This later
feature – that it cannot be obtained through other
means – is something foreign lawyers often
The scope of examination is sufficiently constrained
and any document requests are sufficiently specific. The
letters of request cannot be overly broad or seek to permit a
The request does not contradict Canadian public policy.
The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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