7.6.5 Complying with the Notice or Summons; Reasonable Excuses

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
• 7.6.3 Basis for Requiring Production of Documents or Articles
• 7.6.4 Reasonable Expenses
• ​​​​​​​7.6.6 Sanctions for Non-Compliance
• 7.6.7 Schedule to Requests for Summons or Notice to Produce

Key Legislation:

Patents Act:

• s56 Certain documents and information not to be published or open to public inspection  
• s210 Commissioner's powers  
• s210A Sanctions for non-compliance with Commissioner's requirements

Patent Regulations:

• reg 4.3 Prescribed documents: public inspection

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

Once a summons or notice to produce is issued, the person concerned must comply or the sanctions under section 210A may apply.  There is however a range of circumstances (reasonable excuses) where compliance will not be required and no sanction under section 210A can be applied. These include but are not limited to:

• withdrawal or failure to honour an offer to pay reasonable expenses
• insufficient time to comply
• documents or articles are not sufficiently identified or compliance is otherwise oppressive
• documents or articles (whether the original or a copy) are not in the possession or control of the person required to produce them
• documents include communications that are subject to legal professional privilege (including client/attorney privilege) and privilege has not been waived either explicitly or by implication.
• the documents are not relevant to the proceedings
• an undertaking has been given to a court preventing disclosure of the documents

Concerns about maintaining confidentiality are not a sufficient basis to avoid production.  Under regulation 4.3(2)(b) the Commissioner may direct that a document is not to be open to public inspection and under section 56 may order inspection under appropriate conditions, including undertakings for non-disclosure.  However a direction under regulation 4.3(2)(b) is only made where the Commissioner is satisfied that it is appropriate in the circumstances.

The person to whom the summons or notice is directed should either comply or inform the Commissioner of their objection by the due date.  An objection to one document is not an excuse for not producing other documents to which the objection does not apply.  If appropriate the Commissioner will hear the parties on any objection and make any necessary directions once the period for compliance has ended.  

In some circumstances it may be necessary for the Commissioner to view a document in order to be satisfied that a reasonable excuse is properly made out – in which case the person will be expected to provide the Commissioner with a copy of that document for that purpose (with the document being subsequently returned if the excuse is sustained).