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in patent actions is that these pre-trial procedures may result in trade secrets
being revealed. Article 43.1 provides that the production of evidence may be
compelled, 'subject in appropriate cases to conditions which ensure the protec-
tion of confidential information'. In the UK a plaintiff is required in these
circumstances to show that there are 'formidable grounds' for suspicion that the
defendant is infringing a plaintiff 's rights.
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Where there are concerns about
the disclosure of trade secrets to a commercial rival the court may require the
inspection of discovered evidence to be by an independent expert.
2.109
In the event that a party to a proceeding 'voluntarily and without good reason
refuses access to, or otherwise does not provide necessary information within a
reasonable period, or significantly impedes a procedure relating to an enforce-
ment action', Art 43.2 permits Members to accord the judicial authorities 'the
authority to make preliminary and final determinations, affirmative or negative
on the basis of the information presented to them'. This will include 'the
complaint or the allegation presented by the party adversely affected by
the denial of access to information'. Article 43.2 does, however, provide the
opportunity for the parties to be heard on the allegations or evidence.
(ii) Seizure orders
Compelling a defendant to respond to interrogatories or requests for discovery
presupposes the sort of defendant who may not be typical of the worst sort of
infringer of intellectual property rights. In cases where the defendant is
conducting clandestine infringement activities on a large scale the defendant
will not usually remain available to answer interrogatories or to discover
documents. Indeed, on detection, relevant evidence will immediately be
removed or destroyed. To deal with this situation the English Court of Appeal
in
Anton Piller v Manufacturing Processes
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approved a procedure whereby on an
ex parte application in camera, an order would be granted to an applicant that
the defendant, advised by his legal representative, grant access to the applicant
to inspect the defendant's premises to seize, copy or photograph material which
may be used as evidence of the alleged infringement. The defendant may be
obliged to deliver up infringing goods and tooling and may also be obliged to
provide information about sources of supply and about the destination of
infringing products.
2.110
2.111
Because of the exceptional nature of an
Anton Piller
order in its impact upon an
individual's civil rights, after the demonstration that there is a very strong prima
facie case of infringement, the courts have insisted upon proof that there is a
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Wahl & Anor v Buhler-Miag (England) Ltd
[1979] FSR 183.
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[1976] RPC 719.
