1.3.4 Gathering of information
Another area of significant difference in the judicial case management of patent disputes is the gathering of information, and in particular the extent of discovery (or disclosure), a court-mandated process that requires one party to litigation to disclose documents (or the existence of documents) to another.
All jurisdictions under review in this Guide apply the fundamental principle that requires the parties to present all relevant facts and evidence pertaining to their substantive claims. In patent infringement disputes, the party alleging infringement of their patent must make all necessary factual allegations and, when contested, must take recourse to evidence. Patentees will frequently seek to “test buy” the allegedly infringing device to procure necessary information for the infringement action.42
In some jurisdictions, there is no general discovery system. Rather, there are limited and specific instruments for the plaintiff to discover facts that are not publicly available. These include inspection systems, where alleged infringers will be ordered to submit for inspection documents or items that lie within their control, including by acquiescing to inspection by a neutral technical expert.43
On the other hand, other jurisdictions provide broad and extensive pre-trial discovery to enable the parties to obtain full knowledge of critical facts and issues bearing on the litigation.44 In these jurisdictions, discovery in patent cases is rendered especially complex by the wide range of claims and defenses, the high stakes, the sensitivity of trade secrets and the extensive use of electronic record-keeping by companies. This requires courts to carefully supervise and balance the discovery process, moderating the extent and costs of discovery based on the nature and scope of the case, the amount of any damages sought, and how the case compares to other patent cases. In some jurisdictions, procedures alternative to discovery are introduced to promote a more targeted process, with parties accused of infringement having the option to provide a full and accurate product and process description of the alleged infringing product or process, rather than requiring the disclosure of documents.45 An approach favoring general discovery will necessitate the establishment of a comprehensive system of attorney–client privileges and protective orders in those jurisdictions.
The variation in approaches among countries has led some parties to seek the provisions of jurisdictions with broader discovery mechanisms, which permit a court in that jurisdiction to order individuals within its district to provide testimony or produce documents for use in a foreign proceeding that has limited discovery mechanisms.46