How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular – 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? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?

Intellectual Property (3rd edition)

Malaysia Small Flag Malaysia

While there is a Court in Kuala Lumpur to hear Intellectual Property matters, there may not be any special technical training provided to the Judge. Experts may be appointed by the Court or parties. As Malaysia adopts the adversarial system, it is the burden of both parties to present all the facts they intend to rely on.

The Malaysian Court system provides for discovery applications to be made.

Norway Small Flag Norway

In patent and trademark cases, the court panel will normally consist of one legal judge and two expert judges jointly (or separately) proposed by the parties. In addition, the parties usually present expert witness evidence.

There are mechanisms by which a party to an intellectual property matter may obtain relevant information and evidence from the other party or a third party. After the initiation of a lawsuit, a party may request disclosure of relevant information from the other party. The other party may reject such requests under certain circumstances, e.g. if the information is covered by attorney-client privilege, contains a trade secret or is not sufficiently specified by the requesting party. In the case of trade secrets, the court may decide that the information shall be disclosed, but this is normally done with confidentiality measures.

The right to information also applies to third parties who have contributed to the infringement, been in possession of a product that infringes, have used a service that infringes, have offered a service that infringes, or otherwise have been designated by a person involved as being involved in the infringement. These persons may be compelled by a court of law, upon the right holder’s request, to provide information of the origin and distribution network for goods and services that the infringement concerns, provided that there are reasonable grounds to believe that there has been an infringement of an intellectual property right.

Singapore Small Flag Singapore

IP cases in the High Court are typically heard by specialist IP judges who possess experience and expertise in IP matters.

The parties may also appoint their own expert witnesses. The Court also typically appoints its own independent technical expert to assist the Court in its determination, especially for patent disputes.

The Singapore legal system also provides for the process of discovery whereby parties are obligated to disclose documents which are relevant to the issues and which are in their possession, custody, or power. Notably, this obligation applies even if the documents are damaging to their own case.

Where documents provided are confidential, the parties may agree upon the provision of confidentiality undertakings prior to disclosure.

Mexico Small Flag Mexico

a) 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) 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

The intellectual property cases will be examined by judges with specific IP background who formed a specialized IP tribunal within the court (including the IP tribunal of the Supreme People’s Court) from the general civil court system or specialised IP court. Upon the request of concerned party, expert agreed by the parties can join in the trial. Both concerned parties have rights to prove facts by submitting evidences. The evidences should be either originals or notarized copies. Evidence identification is also acceptable.

Answer to question a):

In China, many judges do not have technical background, but sometimes judges with technical experience are available for IP trials, for instance, one third of judges of the IP Tribunal of the Supreme People's Court mentioned above have technical background.

The specialist IP courts in Beijing, Shanghai and Guangzhou and some intermediate courts have begun to appoint technical investigation officers for hearing complex patent cases. For example, there are 38 technical investigation officers appointed by the Beijing IP Court, offering opinions on the technical issues and helping judges understand technical facts in the cases.

In the trial, the parties may apply to the court for one or two experts to appear in court to explain the specific or technical issues of the case. The opinions of experts appointed by the parties are regarding as statements of the parties. Sometimes, judges may appoint experts from appraisal agency to explain or appraise technical issues of the cases, and the opinions of experts appointed by judges are regarding as testimony.

Answer to question b):

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 result in the court supporting the other party’s claim, what’s worse, violating the EPO may lead to a fine or detention.

Ecuador Small Flag Ecuador

The Court acquires information through the right holder who initiates the legal actions for the infringement of his intellectual rights. That information/evidence is presented before Court during hearings.

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 in Ecuador and none have technical knowledge. Courts do not appoint experts because they are presented to the court by the parties. The same happens with the expert witnesses.

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

All evidence is incorporated into the trial by the parties during the hearing. That evidence in under the custody of the judge, for protection.

Cyprus Small Flag Cyprus

a) There is no technical court, neither is there a technical judge or a judge with technical experience. Expert witnesses may be called to testify before the court, to assist with the presentation of technical matters/ questions. Any party may bring their own expert witnesses to testify and be subjected to cross-examination.

b) In both patent and copyright cases, the respective laws provide for specific powers to the court, to issue a disclosure order; in the case of copyright, the court has the power to issue an order demanding that the counterparty who is purported to have under his/ her control proof/ evidence of copyright infringement, to disclose same to the other party. Further, in cases where there is an allegation that IP rights are violated on a commercial scale, the court may issue- following an application filed by one of the parties- a court order demanding the disclosure of banking, financial or commercial documents to the other party.

In addition, Norwich Pharmacal orders may be issued (disclosure orders against third parties), along with Anton Piller orders (search orders).

Japan Small Flag Japan

In the course of IP litigation, courts often hold a settlement hearing and the judges in charge of the litigation act as mediators by individually speaking with each party in turn. When the parties reach an agreement, the agreement is reflected in the case record as a judicial settlement, thereby ending the litigation. Out-of-court settlement agreement is also an available option.

Switzerland Small Flag Switzerland

a) As a general rule, there are no technical judges and it is up to the parties to evidence any factual or technical information by filing physical records and written statements, requesting testimony, inspection, file expert opinions and request expert to be appointed by Court. If a witness has special (e.g. technical) expertise, the Court may ask him/her/it questions about his/her/its assessment of the facts of the case. The Court may also request ex officio the opinion from one or more experts, if this proves necessary due to the complexity of the matter. Assessments on Swiss law, however, are not to be examined by external experts (the court applies the law; "iura novit curia").

The commercial courts in the cantons Zurich, Berne, Aargau and St. Gallen provide for so called "commercial judges" or "subject matter judges" which operate as external part-time judges with a particular knowledge on a certain business sector (such as e.g. engineering or life science or banking and insurance). Regular proceedings are usually assessed by two (2) to three (3) regular judges and/or two (2) to three (3) commercial/subject-matter judges. The Federal Patent Court is composed of judges with legal training and judges with technical training. In general, the Court makes its decisions as a three-member body, of whom at least one member must possess technical training.

b) There is no pre-trial discovery under Swiss proceedings rules. Precautionary taking of evidence is only ordered by the Court in limited cases (usually where there is a credible risk of loss of evidence for later proceedings). The Parties have the obligation to cooperate in the taking of evidence, for instance to produce the physical records requested by the opposing party if ordered by the Court. Cooperation may, however, be refused if information is protected by the attorney-client-privilege or by other secrets if the secrecy interest overweighs the interest on ascertaining the truth.

Brazil Small Flag Brazil

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 cases that involve highly specific technical details, which is frequently the case of IP litigation specially concerning patent rights, the judge may be assisted by a court-appointed expert registered within a public court list of experts in his field of expertise. Alternatively, the Brazilian Code of Civil Procedure also dictates that the parties can agree upon submitting the technical questions to a specific expert witness, requesting the judge to allow his/her participation, which can be accepted or denied.

It should also be noted that, recently, the Superior Court of Justice has pacified the understanding that in lawsuits of trade dress infringement must have a court expert taking part.

In any case, the parties can also submit their own expert witness evidence (technical assistants).

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

The parties can freely submit different sorts of evidence, i.e. expert witness, documental, etc. In case of risk of losing the opportunity to submit a proof, a special procedure for the production of evidence is available before or concomitant to the main lawsuit. However, parties can omit documents if they are not compelled by the law and the judge to do so, bearing in mind that no one is obligated to produce evidence for self-incrimination.

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 and deputy judges draw from a pool of senior advocates and legal experts.

Experienced specialist patents (and intellectual property) judges in the Court of Appeal are Kitchin LJ and Floyd LJ. In the Supreme Court, several of the justices have experience in intellectual property disputes.

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.

In patent cases, occasionally a technical teach-in for the judge, from an expert in the relevant field, will be ordered. More commonly, the parties are ordered to prepare an agreed 'primer' on the (undisputed) background technology. Almost always, 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 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.

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 use).

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, 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 give standard disclosure (or any disclosure) in a straightforward obviousness dispute.

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

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 articles L. 521-4-1, L.615-5-1-1, L.716-7-1-A of the IPC, 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 seq. and 263 et seq. – of the 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 (Article 11 and 138 of the CPC).

In addition, pursuant to the Article L.331-1-2, L. 521-5, L.615-5-2, L.716-7-1 of the IPC, the judge can, at the request of a party, order the production of the documents needed to ascertain the origin of the infringing goods, the distribution channels and the amount of infringing manufactured and/or commercialized.

Germany Small Flag Germany

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?

Information must be provided by the parties to the proceedings, the Court will generally not undertake any own fact-finding. Courts may however appoint experts for technical fact-finding.

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

The claimant is required to substantiate the claims and, where disputed, provide or offer evidence. The court then decides on which evidence is required. Where evidence is confidential, there are certain ways to limit disclosure to a limited amount of people only and/or exclude the public from parts of the oral hearing.

Italy Small Flag Italy

Under Italian Law the evidence and information must be provided by the parties involved in the proceedings and the court should freely assess them (see also answer to question n.25).

With this regard the interested party, in order to collect evidence before trial, may ask to the Court for the search order (descrizione). The search order can be asked for as an interim measure, before the opening of the ordinary proceedings, or during the ordinary proceedings of infringement. The disclosure/discovery is enforced with a clerk of the court and a court's expert appointed by the judge. The disclosure/discovery order shall be confirmed by the judge in following a hearing with all the parties involved.

Moreover, during the proceedings, the IP owner is also entitled to request the infringer to disclose any information on the origin and distribution networks of the infringing goods or services advertised/marketed/sold ("right of information"). Such information might include the names and addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers, and information on the quantities produced, manufactured, delivered, received or ordered, in addition to the price obtained for the goods or services thereof.

Additionally, further information in the form of a technical opinion may be provided for during the proceedings by experts in IP related matters. Particularly, experts in IP related matters can be involved in the court proceeding both as consultant of the parties concerned or as neutral counsellors who are appointed by the Tribunal to provide an informed opinion on the case subject as a neutral third party whenever the case at hand is technically complex.

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?

The judges who serve in the two specialised EU trademark and patent courts, which are based in Athens and Thessaloniki, have received special training in IP matters before their appointment to the bench. However, they have only legal and not technical background, which means that they do not have sufficient expertise to deal with complex technical issues. This is the reason why opinions of technical experts are of paramount importance in the assessment of the facts as well as in the outcome of the case.

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

Directive 2004/48 on the enforcement of IP rights has been transposed into Greek law. Said provisions assist in obtaining and preserving evidence either during summary or ordinary proceedings. Theoretically, provisional measures to preserve evidence may be taken without the other party having been notified/heard. However, as a rule, Greek Courts do not order such measures ex parte.

The Court may request and order that the defendant produces evidence held in his possession and that he communicates banking and financial documents. In issuing such order, courts take into account the need to preserve legitimate trade secrets of the defendant as well as the principle of proportionality.

In the context of criminal cases, the Public Prosecutor and the investigating authorities are responsible for collecting and preserving evidence.

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.

Peru Small Flag Peru

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?

As said before, the appointed court is the Contentious-Administrative which is formed by judges with technical experience. These judges review the evidence presented by each party, including the administrative file handled by INDECOPI and, in some cases, they transfer the file to the Court of Justice of the Andean Community for a prejudicial interpretation of the case, serving as an important precedent to take into account when emitting the final decision.

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

Our national legislation contains as an administrative principle, the right of free access to public information, which consists of the power that we have to request without expression of cause the information that we require and receive it from any entity, within the legal term. This disposition can also be applied between entities, from the administered to the public entity, and the other way around. Meaning that our trademark authority (INDECOPI) or judicial authorities (Contentious Administrative Court and others) can also obtain evidence by obliging a party to present information that is considered necessary in order to continue with the evaluation of the case in process, under risk of receiving penalty fines for contempt or leaving the process without effect.

However, when one submits an evidence that can serve as supporting documents but its public knowledge can harm or negatively affect, he/ she who presents that information, either because of a contractual clause, protection of know-how, risk of affecting a personal or familiar intimacy or industrial and business secret, can request through a separate or in the same writ, its confidentiality along with the arguments and other documentation that prove its confidential or delicate quality. After that, the competent authority will evaluate the request and communicate its decision of reservation either by the Commission, Office or respective Court.

In those cases in which the Administrative Authority resolves not to declare the documents presented confidential, the applicant will be required that, within five (5) business days, inform if they want such documents to be returned to them, otherwise, they will be included in the public file with the same treatment as any other document included in said file.

Malta Small Flag Malta

There are no formally appointed technical judges with regard to IPR cases in Malta, however due to the way in which the case load is distributed among judges, judges with the relevant experience in IP are generally assigned the majority of cases concerning such subject matter. The Court also has the power to appoint experts and judicial assistants to assist it, whereas the parties may also produce their own experts and expert reports in order to substantiate their claims.

With regard to patents, Malta has a specialised court – The Patents Tribunal.

Disclosure and discovery are not concepts found in Maltese law, however, as discussed above, practice in the field has developed in such a way as to for instance allow the warrant of description to be used to obtain information akin to the disclosure and discovery concepts. Similar measures under Chapter 488 (transposing the Enforcement Directive) are designed to preserve evidence, or to disclose information subject to further requirements.

In the latter case, the measure to disclose information under Chapter 488 gives the power to the Court to order that information on the origin and distribution networks of the goods or services which infringe an IPR be produced before it. This is however limited to information on the origin and distribution networks of the goods or services which infringe an IPR.

South Africa Small Flag South Africa

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. Each party appoints and pays for its own expert witnesses. In the case of an Application on Notice of Motion the expert witness deposes to an Affidavit whereas in an Action the expert witness has to appear in Court to lead evidence and be subject to cross-examination,

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

Discovery is available in Action proceedings and all Discovery is on paper. A party can be compelled to discover by way of an Application to Compel and failure to comply with an order to Discover can lead to dismissal of the party’s case. In the case of an Application there is no discovery and the parties stand and fall by the evidence at their disposal and which has been disclosed in the Affidavits.

Israel Small Flag Israel

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?

Judges generally do not have technical experience. In patent cases the judge may appoint an assessor. The judge may also be educated by the parties’ respective experts and may also appoint its own expert.

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

Discovery and interrogatories are available. A party not satisfied with the counterparty's response may file a motion to compel, which should in principle be successful for relevant information that is not privileged, provided that the request is not overly burdensome.

Saudi Arabia Small Flag Saudi Arabia

Discovery procedure is not available in Saudi Arabia. The court or the Saudi Patent Committee has authority to appoint Expert in any dispute. Witness evidence is not common in IP litigation however such evidence can be used. It is not possible to compel a party for disclosure of any documents or information; however, each party must substantiate its claim with documentary support. The court has discretion to order any party for production of any document which in opinion of court is required for deciding the dispute.

Australia Small Flag Australia

At an early stage in the proceedings parties should consider and confer about an approach to the management of evidence. That consideration should cover the best way to lead evidence - whether written or oral. The parties' approach should have in mind the most effective, efficient and economical way to manage evidence. Innovative tools relating to managing evidence will be encouraged by the Court, including the use of:

  • statement of agreed and disputed facts;
  • joint reports and concurrent expert evidence; and
  • organisation of evidence, where appropriate, into discrete components.

Detailed guidance on evidence is set out in Part 11 of the Federal Court’s Central Practice Note (CPN-1).

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 Intellectual Property National Practice Area (NPA) of the Federal Court (FCA) covers disputes concerning matters such as patents, trade marks, copyright, designs, circuit layouts, plant breeder's rights and appeals from the Commissioner of Patents or Registrar of Trade Marks. Specialist judges in the Intellectual Property NPA are listed on the FCA website.

Parties intending to rely on expert evidence at trial are expected to consider between them and inform the Court at the earliest opportunity of the best way to efficiently manage and adduce expert evidence, including such matters as the use of joint-reports, concurrent evidence, and how evidence may best be given (orally or in writing) and so on. Detailed guidance on these matters is set out in the Federal Court’s Expert Evidence Practice Note (GPN-EXPT) with which the parties should be familiar.

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

To the extent that discovery may be necessary, it is dealt with in Part 20 of the Federal Court Rules. No party is to give, and so no party has a right to, discovery without an order. A discovery applicant should not make a request unless it will facilitate the just resolution of the proceeding as quickly, inexpensively and efficiently as possible. Detailed guidance on discovery is set out in Part 10 of the Federal Court’s Central Practice Note (CPN-1).

A subpoena may also be issued with the leave of the Court. A subpoena is an order to the addressee requiring attendance to give evidence in Court or the production of a document or a thing to the Court, or both. The issuing party bears the onus of demonstrating that the subpoena has a legitimate forensic purpose in relation to the issues in the proceeding. Detailed guidance is set out in the Federal Court’s Subpoenas and Notices to Produce Practice Note (GPN-SUBP).

United States Small Flag United States

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?

Parties normally employ their own experts that help inform the court about technical issues. There is no technical judge, however, some judges do have technical backgrounds. Due to the rules regarding jurisdiction, certain judges have more experience with IP specific disputes than others. The collection of knowledge normally develops when a jurisdiction is home to a certain industry, or where many companies are incorporated, like Delaware.

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

In the United States, the parties may compel the opposing party to reveal any relevant information they have, subject to only limited protection for attorney-client privileged and confidential information. The discovery process is designed to prevent surprises when the parties reach trial. Privileged evidence typically applies to information shared between a client and their attorney, or material that is prepared in view of litigation. This evidence should be properly marked and designated as privileged under attorney client or work product.

Updated: September 12, 2019