Reducing The Haystacks To Find The Needles

As in other Common Law jurisdictions, one of the distinguishing characteristics of litigation in England and Wales as compared to its Civil Law (or "continental") counterparts is the availability of document disclosure. Referred to as "document discovery" in US procedure, this is the requirement on one party to litigation to provide to the other the documents and materials in its possession that are (or may be) relevant to the case.

So, a party to English proceedings can gain access to relevant documents of its opponent in a manner-un-available to parties to litigation in continental (Civil Law) European countries. The downside, however, is the cost and time for each party to search for and review potentially relevant documents for disclosure. With the increase in the capacity of document storage technologies and the sheer volume of electronic documents generated and retained on a daily basis in modern commercial life, this task becomes ever more challenging. And costly.

English patent litigation procedure has long been ahead of the rules governing other (non-patent) English litigation in tackling the burden of disclosure while seeking to preserve its advantages. An alleged infringer, for example, can avoid altogether the need to disclose documents relating to the allegedly infringing product or process. To do so they can instead opt to provide a description of the product or process in sufficient detail to enable the court to determine the issue of infringement. This Product / Process Description (PPD) is signed by someone having knowledge of the matters it describes and who can, if necessary, be cross-examined in court on any points of contention or doubt.

The use of PPDs makes English procedure (and the UK as a forum for patent litigation) attractive from the point of view of proving infringement. A case can be started on a good faith belief in infringement inferred or evident from publicly available information. This avoids the need to engage in uncertain pre-action seizures or costly testing or reverse engineering. Provision of the PPD then provides clarity as to the factual position, leaving legal arguments for and against infringement to proceed on a sound footing.

English patent litigation procedure also limits disclosure on the validity side. For example, no disclosure is required of documents relevant to validity that fall outside a four year window: two years either side of the contested patent's priority date.

But even the...