37. Production of documents

In any proceedings where the validity of a patent is put in issue, the application of Order 11 of the Rules of Court is subject to the modifications in this rule.

A document falling within any of the following classes (called in this rule exempt documents) must not be listed:

a document relating to any ground on which the validity of a patent is put in issue, but not a document that came into existence within the period beginning 2 years before the earliest claimed priority date and ending 2 years after that date;

a document relating to the issue of commercial success.

If the issue of commercial success arises, the proprietor of the patent must serve a schedule containing the following details:

where the commercial success relates to an article or a product —

an identification of the article or product (for example, by product code number) that the proprietor asserts has been made in accordance with the claims of the patent;

a summary by convenient periods of sales of any such article or product;

a summary for the equivalent periods of sales (if any) of any equivalent prior article or product marketed before the article or product mentioned in sub‑paragraph (i); and

a summary by convenient periods of any expenditure on advertising and promotion which supported the marketing of the articles or products mentioned in sub‑paragraphs (i) and (iii);

where the commercial success relates to the use of a process —

an identification of the process which the proprietor asserts has been used in accordance with the claims of the patent;

a summary by convenient periods of the revenues received from the use of such process;

a summary for the equivalent periods of the revenues (if any) received from the use of any equivalent prior art process; and

a summary by convenient periods of any expenditure which supported the use of the process mentioned in sub‑paragraphs (i) and (iii).

Despite paragraph (2), any party may apply under Order 11 of the Rules of Court for further and better production or specific production of any exempt document.

To avoid doubt, paragraph (2) does not create any privilege in an exempt document.

If, despite paragraphs (1) and (2), a party (X) produces an exempt document for inspection —

any other party (Y) may request X in writing to provide a supplementary list of all other documents within the same class as the exempt document; and

unless the Court orders otherwise, X must serve the supplementary list on Y within 14 days after the request.

This rule does not affect the Court’s power to limit production on any other ground.

In any proceedings where the validity of a patent is put in issue, the application of Order 11 of the Rules of Court is subject to the modifications in this rule.

A document falling within any of the following classes (called in this rule exempt documents) must not be listed:

a document relating to any ground on which the validity of a patent is put in issue, but not a document that came into existence within the period beginning 2 years before the earliest claimed priority date and ending 2 years after that date;

a document relating to the issue of commercial success.

If the issue of commercial success arises, the proprietor of the patent must serve a schedule containing the following details:

where the commercial success relates to an article or a product —

an identification of the article or product (for example, by product code number) that the proprietor asserts has been made in accordance with the claims of the patent;

a summary by convenient periods of sales of any such article or product;

a summary for the equivalent periods of sales (if any) of any equivalent prior article or product marketed before the article or product mentioned in sub‑paragraph (i); and

a summary by convenient periods of any expenditure on advertising and promotion which supported the marketing of the articles or products mentioned in sub‑paragraphs (i) and (iii);

where the commercial success relates to the use of a process —

an identification of the process which the proprietor asserts has been used in accordance with the claims of the patent;

a summary by convenient periods of the revenues received from the use of such process;

a summary for the equivalent periods of the revenues (if any) received from the use of any equivalent prior art process; and

a summary by convenient periods of any expenditure which supported the use of the process mentioned in sub‑paragraphs (i) and (iii).

Despite paragraph (2), any party may apply under Order 11 of the Rules of Court for further and better production or specific production of any exempt document.

To avoid doubt, paragraph (2) does not create any privilege in an exempt document.

If, despite paragraphs (1) and (2), a party (X) produces an exempt document for inspection —

any other party (Y) may request X in writing to provide a supplementary list of all other documents within the same class as the exempt document; and

unless the Court orders otherwise, X must serve the supplementary list on Y within 14 days after the request.

This rule does not affect the Court’s power to limit production on any other ground.