Tanner, How Do I... Examine an Inventor Who Lives in Canada?

Tanner, How Do I... is a blogging series in which Steven Tanner provides helpful answers to IP law questions.

You are involved in a foreign case and want to examine an inventor of a patent. Just one problem: the inventor lives in Canada. Can you compel the inventor’s testimony for use in your foreign proceeding? Yes! And here’s how.

Examination of a Canadian inventor for use in a foreign proceeding requires a two-step approach:

1. obtain an order from the foreign Court requesting the assistance from a Canadian Court to compel the examination of the inventor (“Foreign Order”); and

2. obtain an order in a Canadian Court enforcing the foreign order (“Canadian Order”).

Let’s look at those steps in more detail.

Step 1 - Obtain a Foreign Order

The Foreign Order is commonly referred to as a “Letter of Request” or “Letters Rogatory”. It is an order from a non-Canadian Court requesting the assistance of a Canadian Court to compel the examination of an inventor resident in Canada who is outside the jurisdiction of the foreign Court.

Sections 46-51 of the Canada Evidence Act set out the rules and procedures for enforcement of the Foreign Order. These rules and procedures have been codified in provincial statutes.

Because the Federal Court of Canada cannot enforce a foreign Letter of Request, the Foreign Order must be directed to the Superior Court in the Province where the inventor resides. For an inventor living in Ontario, the Letter of Request will be directed to the Ontario Superior Court of Justice.

There is some debate as to whether the Foreign Order will be enforced if it is made by a tribunal, arbitrator or commission (for example, the United States International Trade Commission). Where the inventor’s evidence is sought for use in a foreign tribunal, arbitration or commission the safer course is to obtain the Foreign Order from a local Court. Canadian Courts will give effect to a Letter of Request made by a foreign Court even if that evidence will not be used before that Court.

There are no rules dictating the form of Foreign Order (different jurisdictions have different forms), but the content of the Foreign Order will be scrutinized by the Canadian Court, as described below.

Step 2 - Obtain a Canadian Order

A Canadian Order compelling the inventor to attend for examination can be obtained by bringing an application in the relevant Provincial Court. However, a Canadian Court will not simply order that an inventor attend for examination because a request has been made. The applicant seeking to enforce the order must satisfy the Court that the application ought to be granted and the inventor ought to be examined.

The general factors that the Court will consider were recently set out by the Ontario Court of Appeal:

1. the evidence sought is relevant;

2. the evidence sought is necessary for trial and will be adduced at trial, if admissible;

3. the evidence is not otherwise obtainable;

4. the order sought is not contrary to public policy;

5. the documents sought are identified with reasonable specificity; and

6. the order sought is not unduly burdensome, bearing in mind what the witnesses will be required to do, and produce, were the action to be tried.

The court is also required to balance the impact on Canadian sovereignty and whether justice requires the taking of commission evidence in deciding whether to exercise its discretion to enforce the Letter Rogatory.

Even if the Canadian Court grants the application, the judge may narrow the scope of the request and is not required to grant or deny enforcement in its entirety.

The Canadian Court can also grant the application with terms or conditions. A common condition is that the testimony given or documents produced may only be used for the purpose of the foreign proceeding and cannot, for instance, be used against the inventor in separate proceedings. Other conditions may include:

1. timing and scope of documentary discovery;

2. timing, location and length of the examination; and

3. payment of reasonable expenses, including legal fees.

The product of the inventor’s examination will be a written transcript and/or video recording or testimony given under oath. The inventor’s evidence can be used in the foreign proceeding without violating Canadian law because the implied undertaking rule will be waived in the Canadian Order.