7.6.3 Basis for Requiring Production

Also in this Chapter:

• 7.6.1 Requests for Commissioner to Exercises Powers Under Section 210(1)(a) ＆ 210(1)(c)
• 7.6.2 Basis for Issuing a Summons
• ​​​​​​​7.6.4 Reasonable Expenses
• 7.6.5 Complying with the Summons or Notice to Produce, Reasonable Excuses
• 7.6.6 Sanctions for Non-Compliance
• 7.6.7 Schedule to Requests for Summons or Notice to Produce

Key Legislation:

Patents Act:

• s210 Commissioner's powers  

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

The Commissioner may only require a person to produce documents or articles where:

i. the person has a substantial interest in the proceedings before the Commissioner;

ii. the document or article is likely to be of substantial relevance to a matter before the Commissioner.

A person having a “substantial interest” in the proceedings is one having a material stake in the outcome.  This most particularly includes the parties and, by virtue of section 210(6), any officer, agent or employee of a body corporate that is a party to proceedings.  A substantial interest is not necessarily limited to a direct commercial interest.  For example, an inventor, or an expert who has already given documentary evidence in a proceeding, will be considered to have a substantial interest even if not directly associated with a party.  On the other hand, third parties who have not previously given evidence in a matter will not be considered to have the requisite interest and are not subject to a requirement to produce.  

“Likely to be of substantial relevance" means that the documents or articles required are likely to be of substantial probative value in the determination of a matter before the Commissioner.  This goes beyond evidence that may be merely relevant to the Commissioner’s determination.  It requires a realistic expectation that the documents or articles are of such significance that they may be determinative of a matter before the Commissioner.

Unless a document or article is identified with sufficient particularity for its relevance to be determined it cannot be the subject of a requirement to produce.  Section 210 is not an opportunity to discover what relevant documents are in possession of another party or to obtain documents of potential relevance.  Requests of this nature will be refused.

A person may be required to produce a document or article whether the person (or the document or article) is in or out of the patent area.