One of the things that English based IP lawyers find most surprising about the court system in Scotland is that we have no equivalent to discovery. In this jurisdiction there is no blanket obligation on a party to a litigation, to disclose documents to their opponent.

There is no doubt that this brings a cost saving, but it can be frustrating for rights holders who want to access evidence of wrongdoing and/or infringement but which is not easily obtainable in Scotland. This issue was identified in the Intellectual Property (Enforcement, etc) Regulations 2006 (giving effect to Directive 2004/48/EC on the enforcement of IPR) with Scotland specific provisions to allow for disclosure of information in IP cases.

However, one way round this is for the  rights holder to apply to the Scottish IP Court for an order requiring any other person in Scotland (not just party to the action) to produce documents and/or property during the course of the action. One note of caution is that the Court will not authorise a “fishing expedition” and before a document recovery order is granted, the rights holder must demonstrate that the documents/property are relevant to their claim as presented..

A document recovery order can be sought at any time after defences have been lodged and before the proof (trial). The timing of the request of the order will normally be driven by tactical or commercial considerations.

The person that is believed to have the documents (the “haver”) may not produce them voluntarily. If that happens, they can be called to appear at a hearing where they will have to answer questions, under oath, about which documents exist, and where they are.  At that stage, all documents within the possession of the haver, that fall within the order, must be produced – even if they are adverse to that party’s case. A commission is a useful way of getting a witness’ position “on record” in advance of trial.

The haver may claim that they are confidential. If that is the case they should lodge the documents in court in a sealed envelope, so that the court can decide whether they should be disclosed. Documents recovered in this way can only be used for the purposes of the litigation and must otherwise be kept confidential.

The absence of disclosure in Scotland makes applications for a “dawn raid” order (the Scots equivalent of a Search and Seizure Order) more likely to be of benefit and it is experience the IP Court is probably more willing to grant such an order in Scotland, compared to England.

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