Answer ... Yes, discovery (referred to in the United Kingdom as ‘disclosure’) is available both before and during patent litigation.
Once an action has commenced, disclosure typically takes place after the parties have filed their statements of case, but before fact and expert evidence is exchanged.
Disclosure may be ordered before proceedings start if:
- both applicant and respondent are likely to be a party to subsequent proceedings;
- the respondent’s duty under standard disclosure (discussed below) would extend to the documents being sought; and
disclosure before proceedings start would be desirable in order to dispose fairly of the anticipated proceedings or assist the dispute to be resolved without proceedings, or to save costs.
Answer ... Once an action has commenced, disclosure typically takes place after the parties have filed their statements of case, but before fact and expert evidence is exchanged. In the Patents Court, each party is required to serve a disclosure report at least two weeks before the case management conference, in which it briefly describes:
- what documents exist or may exist that are or may be relevant to the matters in dispute;
- where such documents are located; and
- in the case of electronic documents, where they are stored.
At least seven days before the case management conference, the parties must meet (either in person or by telephone) to try to agree a proposal in relation to disclosure that meets the ‘overriding objective’ in the Civil Procedure Rules. Although standard disclosure (see question 7.3) is common, disclosure orders are frequently more bespoke to the particular case. Disclosure is usually much more limited in the IPEC.
In certain circumstances, it is also possible to seek the disclosure of specific documents from a party, as well as to seek disclosure of documents from a non-party to the action.
Answer ... Traditionally, the most common order for disclosure in civil proceedings in the United Kingdom is ‘standard disclosure’. This requires the parties to carry out a reasonable search for documents that are, or have been, in their control, which fall within the following categories:
- documents on which they rely; and
- documents which adversely affect their own case, adversely affect another party’s case or support another party’s case.
Once this has taken place, the parties exchange lists of such documents and then examine the documents that are made available for inspection. Certain categories of documents need not be made available for inspection (eg, privileged documents). Standard disclosure in patent cases is limited as set out below:
For issues relating to infringement, the alleged infringer is not required to disclose documents relating to the product or process alleged to infringe if it instead elects to provide a ‘product and process description’. This is a document setting out full particulars of the product or process alleged to infringe. It must be complete in all relevant areas and must contain information at a sufficient level of detail to allow all infringement issues to be resolved by the court. It must also be accompanied by a signed written statement which:
- states that the person making the statement is personally acquainted with the facts to which it relates;
- verifies that the description is a true and complete description of the product or process; and
- contains an acknowledgment by the person making the statement that he or she may be required to attend court to be cross-examined on the contents of the description.
- For issues relating to invalidity, the patent owner is required to disclose only documents which came into existence within a two-year period either side of the priority date.
In addition, disclosure in relation to validity issues is becoming more focused. There is an increasing acceptance that disclosure of documents concerning the making of an invention rarely plays a significant role at trial, so disclosure in relation to obviousness is frequently dispensed with.