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 (2nd edition)

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?
Judicial research officials, full-time court staff members consisting of former JPO trial examiners and patent attorneys, etc. and/or technical advisors, part-time national public officers designated by the court in each case, are engaged in technology-based IP-related litigation.

b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Discovery is not available in Japan. However, courts may, upon a motion from a party, order the other party to produce documents that are required to prove the infringing act or to calculate the damage, unless there are reasonable grounds for the person possessing the documents to refuse production of such documents. If the other party does not comply with the order, the court may recognize that the party’s allegations are true.

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.

24. 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.

24. 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.

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.

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.

Updated: June 15, 2018