7.6 Production of Documents, Summonsing Witnesses

Date Published

Note: This information applies to powers exercised by the Commissioner under Section 210, on or after 15 April 2013.

 

Relevant Legislation

The Act

Section 210Commissioner’s powers
Section 210ASanctions for non-compliance with Commissioner’s requirements

The Regulations

Reg 22.14Directions not otherwise prescribed

 

 

Overview

Under section 210(1) of the Patents Act the Commissioner has the power to:

  1. summons witnesses; and
  2. require the production of documents or articles

However, this power is limited by paragraph (2) which provides that the Commissioner must not summons unless satisfied that:

  1. the witness has a substantial interest in the proceedings before the Commissioner;
  2. the witness is likely to provide oral evidence of substantial relevance to a matter before the Commissioner;
  3. receiving oral evidence from the witness is necessary or desirable in all the circumstances; and

the Commissioner notifies the witness of the actions the Commissioner may take under section 210A if the witness fails or refuses to comply with the summons.

Similarly the Commissioner must not require a person to produce a document or article unless satisfied that:

  1. the person has a substantial interest in the proceedings before the Commissioner;
  2. the document or article is likely to be of substantial relevance to a matter before the Commissioner; and

the Commissioner notifies the person of the actions the Commissioner may take under section 210A if the person fails or refuses to comply with the requirement.

It should be noted that under paragraphs 210(3) and (5) the Commissioner may summons a witness, or require a person to produce a document or article, whether the witness and/or person is in, or out of, the patent area.

Furthermore under paragraph 210(6) the Commissioner’s powers to make a requirement of a person extend, if the person is a body corporate, to making that requirement of any person who is an officer, agent or employee of the body corporate.

The Act under section 210A prescribes a range of sanctions for non-compliance – See 7.6.6 Sanctions for Non-Compliance​​​​​​​.

Regulation 22.14 provides the Commissioner the power to issue a notice to a person requiring that person to perform an act, file a document or produce evidence, if the Commissioner reasonably believes it is necessary for the prosecution or completion of proceedings.  Unlike section 210, failure to comply which such a notice can only have such consequences that are otherwise available under the Act and Regulations including that a discretionary power may not be exercised in the favour of the person concerned.  The power under regulation 22.14 is exercised only in rare circumstances and is not discussed further in this part.