How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so?

Intellectual Property

Singapore Small Flag Singapore

Factual evidence is given through affidavit and examination of witnesses on the stand.

a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
The High Court has identified judges who are able to bring their considerable experience and expertise in specialist areas of law to bear on complex cases, and there is an identified list of judges for intellectual property cases.

The court may, on its own motion or on the application of any party, appoint an expert. The court appointed expert will then produce a report, and any party may apply to the court for leave to cross-examine the expert on his report.

Parties may also appoint expert witnesses, and the expert must produce a written report signed by the expert and exhibited in an affidavit affirmed by the expert. The expert will be subject to cross-examination.

b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Litigants can take out applications for specific discovery, discovery against a non-party (Norwich Pharmacal orders), or search orders (Anton Piller Orders).

Generally, evidence disclosed in the course of proceedings is also protected by the common law Riddick principle. Alternatively, the court can order the establishment of a confidentiality club. In patent proceedings, where the allegedly infringing process is a trade secret, a defendant can claim limited discovery.

France Small Flag France

a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence?
There is no technical judge in the French judicial system, although IP litigation is handled by specialized courts with exclusive jurisdiction.

Should the technicality of the issue require it, the court can decide to appoint an expert in the concerned field.

Pursuant to IPC articles L. 521-4-1, L.615-5-1-1, L.716-7-1-A, investigation measures can be ordered either, at the request of one party or on the court’s own initiative, resulting in the appointment of an expert (Articles 143 et sequitur and 263 et sequitur – French Civil Proceedings Code (CPC)).

In such a case, the court order will define the scope of the expert assessment and the parties will be required to cooperate with the designated expert.

In addition, each party can also choose to file amicable expert reports drafted at its requests.

b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
There is no discovery or disclosure procedure (requiring from a party to disclose information or documents) available under civil procedure rules.

However, judges are vested with investigation powers and can issue injunction requesting the production of evidence in compliance with civil proceedings rules (CPC articles 11 and 138).

In addition, pursuant to the IPC articles L.331-1-2, L. 521-5, L.615-5-2, L.716-7-1, the judge can, at the request of a party, order the production of the documents needed to ascertain the origin and the distribution channels of the infringing products.

Portugal Small Flag Portugal

a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
R: There is no technical judge or a judge with technical experience in the Portuguese IP Jurisdiction, however, the IP Court is considered a specialized Court, once their judges only decide IP cases. Nevertheless, the Court or the parties can appoint an expert or experts for certain complex procedures. Depending on the nature of the IP right, both the Courts and the alternative dispute resolution centres may request technical support of engineers or other technical experts in order to help in the decision.

b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
R: The general civil procedure rules are available for compelling the obtaining and protecting of evidence like seizures, interim measures, inspections.

India Small Flag India

a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
In India, district court and High Court benches are not divided on the basis of expertise. Parties may produce their own subject matter experts. Further, courts may call for subject matter witnesses on their own motion.

b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Anton Pillar orders (allowing for search and seizure by plaintiff at the defendant’s premises), are widely used in intellectual property infringement matters. Evidence seized can also be sealed and returned on good faith to the defendant to be produced when the court so demands. Witnesses can also be summoned.

Yes, disclosure and discovery are available.

Greece Small Flag Greece

a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?

There are no technical judges or judges with technical experience in Greece. When the court deems that technical expertise is required, primarily in patent litigation, it issues an interim judgment appointing a court expert or allowing the parties to appoint such expert from the list of experts registered with the court. Parties may appoint their own technical experts to review and/or comment the court appointed expert's opinion.

Regardless of that, parties may submit technical expert opinions / testimonies, as part of their evidence in trial.

b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?

In civil litigation, the rules of the IPR Enforcement Directive 2004/48 have been transposed to the Greek legal order. In parallel, the Greek Code of Civil Procedure includes provision re. the protection of evidence, even as part of an interim relief application.

There are limited rights to disclosure, which, are practically difficult to effectively enforce. The most effective mechanism is the one enshrined in the IPR Enforcement Directive.
In criminal cases, the task of collecting and safeguarding evidence lies with the Public Prosecutor and the investigating authorities. They have wide discretion, but limited resources.

Japan Small Flag Japan

a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
A court may, after hearing opinions of the parties, appoint a “technical adviser” to hear his/her explanation based on expert knowledge. There is no technical judge system.

b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Parties may file with a court a petition for an order to submit a document, by specifying a document(s) and the other information. Also, for intellectual property cases, protective orders are available under the Patent Act, etc. to limit the use and disclosure of the trade secrets that are included in briefs and evidence.

Mexico Small Flag Mexico

a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?

There are experts that shall be firstly appointed by each party. Then if the opinion rendered by such experts is contradictory, the judge appoints a third expert to resolve the contradiction.

b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?

Discovery is not available in Mexico. However, when it comes to confidential information that needs to be submitted in a trial, the court shall implement the required measures to keep its confidentiality.

China Small Flag China

a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
Technical judges are available for IP trials on a non-compulsory basis. Courts may appoint experts for technical fact-finding. It should be noted that party-led expert evidence is not the norm in China (although becoming more regular in complex patent cases).

b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Disclosure/discovery is unavailable in China. Parties have no obligation to voluntarily disclose documents whether positive or negative to the case.

Courts may grant an Evidence Preservation Orders (EPO) against a party to obtain specific evidence. An EPO will be granted if the applicant demonstrates that the evidence is at risk of loss or may be difficult to obtain from the defendant in future. Non-compliance with an EPO may lead to a fine or detention, depending on the seriousness of the breach. The most serious cases may constitute a criminal offence, punishable by up to three years in prison and a fine. Detention is rare in IP cases.

United Kingdom Small Flag United Kingdom

In the courts of England and Wales, judges are appointed from among the most senior advocates in the relevant field. IP claims are therefore usually heard by specialist judges. In the Patents Court, cases are given a technical complexity rating (which is usually agreed between the parties) to ensure the case is allocated to a judge with sufficient technical experience. More complex patent cases tend to be allocated to Arnold J, Birss J or Henry Carr J – experienced patent judges who are also judges in the wider Chancery Division.

In the IPEC, patent cases are heard by intellectual property specialist HHJ Hacon.

Experienced specialist patents (and intellectual property) judges in the Court of Appeal are Kitchin LJ and Floyd LJ, and in the Supreme Court, Lord Neuberger.

In the early stages of a case, the Court will hold a Case Management Conference, which will set the structure of the proceedings leading to trial, including the types of evidence that can be brought into the case.

The parties rely on the (written) evidence of expert witnesses in respect of the technical points in dispute. An expert witness may be, for instance, an engineer with experience in the technical matter of a patent. It is often said that a case can turn on the expert evidence, as judges place considerable weight on the opinions of experts. Pursuant to the CPR, the duty of the experts is to impartially advise the Court, even when they are instructed by only one party to the litigation (which is usual). At the trial, cross-examination is employed to test the evidence and to assist the judge in reaching conclusions on the technical and factual matters in dispute. In patent cases, the judge may occasionally order a technical teach-in from an expert in the relevant field to be provided, or for the parties to prepare an agreed 'primer' on the (undisputed) background technology.

Fact evidence may also be employed, to establish facts in dispute. For instance, this may be evidence from a consumer who has been confused by the similarity of two trade marks, or from an individual on the making (or not) of an offer for sale. Again, evidence in chief is given in writing and at the trial it may be scrutinised by cross examination.

A party may also seek to adduce evidence in other forms, for instance, experimental evidence to demonstrate a component of a product falls within the scope of a patent, photographs or models, or survey evidence demonstrating confusion in trade mark cases (though surveys can be of limited persuasive value).

At the Case Management Conference, the Court will also consider whether any disclosure is required. There is no longer a prima facie rule that standard disclosure be given. In patent cases, a product and process description is typically provided by the alleged infringer in place of disclosure of the allegedly infringing product and process. Absent a "smoking gun" or a more sophisticated type of argument (such as the patentee relying upon commercial success or the reaction of others to the invention), the Court will be disinclined to order further disclosure.

Search and seizure orders and orders for the provision of information may be available where considered appropriate by the court.

South Africa Small Flag South Africa

Patents and Designs

The judge is an ordinary High Court judge appointed to sit as the Commissioner of Patents. He/she is not necessarily a technical judge nor does he/she necessarily have technical experience. Each party appoints their own expert witness(es) and bears the onus of proving that their expert is suitably qualified. The same principles apply to registered designs. As mentioned above, discovery is available. The possibility exists for the filing of one or more interlocutory applications relating to further and better discovery, compelling discovery, or inspection. Furthermore, it is also possible to obtain an Anton Piller order to search premises and seize evidence without prior warning to a counter-party.

Plant Breeders’ Rights

The judge is not necessarily a technical judge nor does he/she necessarily have technical experience. Each party appoints their own expert witness(es) and bears the onus of proving that their expert is suitably qualified. There are no court appointed experts. As mentioned above, discovery is available. The possibility exists for the filing of one or more interlocutory applications relating to further and better discovery, compelling discovery, or inspection. Furthermore, it is also possible to obtain an Anton Piller order to search premises and seize evidence without prior warning to a counter-party.

Trade Marks and Copyright

There is no specialised court or technical judge that is appointed. If the civil proceedings are filed by way of application procedure, information is adduced by affidavits and supporting documentation. It is possible to file affidavits from experts.

If there is a dispute of fact and civil proceedings are filed by way of action procedure, witnesses testify and provide information under oath to the Court. It is possible to furnish oral evidence from an expert witness.

Discovery of evidence is possible. Furthermore, it is also possible to obtain an Anton Piller order to search premises and seize evidence without prior warning to a counter-party.

UAE Small Flag UAE

The Court relies on the parties to proceedings to put further the necessary information and supporting materials in their respective pleadings. As outlined in 19.1 above, where the judge believes it is necessary to do so, it is possible for a Court expert to be appointed. The Court expert is not always an expert in IP matters. The expert's report is not binding on the judge.

a) Since 2015 the UAE has trained up a number of judges and other members of the judiciary in IP matters. This has involved IP specific qualifications and spending time training with overseas experts. Whilst there is no specialist IP Federal court, these judges are part of an IP Court Circuit in the Federal Courts. The emirate specific courts, such as Dubai, do not yet have similar IP Court Circuits. Rights holders are already seeing the benefit of this circuit with cases progressing more quickly and an increased awareness of and experience in dealing with complex IP issues.

b) There have been a small number of cases where the Court of Urgent matters has provided orders relating to the preservation of evidence in IP matters. There is no discovery process. A party will submit into evidence the documents it wishes to rely on. Documents issued from overseas will need to be notarised and legalised in order to be given any evidential weight by the Court.

Updated: June 27, 2017