Discovery procedures in foreign patent proceedings

December 01 2009

A little known provision of US law, 28 USC § 1782, allows for the use of US discovery proceedings to secure evidence for use in foreign judicial or administrative proceedings. This has been employed successfully to assist in patent infringement proceedings outside of the US, and may even be used in patent opposition proceedings outside of the US.

It is no secret that discovery in litigation outside of the US is limited; in many countries it is nearly nonexistent. In foreign administrative proceedings, such as patent oppositions, it is completely nonexistent. But § 1782 permits "interested persons" to use US discovery proceedings to secure information from people and companies in the US for use in such foreign proceedings. This section provides that any "interested person" may ask a district court to order a person who "resides or is found" in that district "to give his testimony or statement or to produce a document or other thing for use in a proceeding in a foreign or international tribunal".

This relief, while discretionary with the court, may be a powerful weapon to be wielded by a participant in the foreign proceeding. For example, a § 1782 proceeding may be used by a party seeking to invalidate a European patent based on prior sales of the invention to seek sales information from a US subsidiary or US-based customer of the patentee. The Supreme Court has ruled that the foreign proceeding need not be pending, so long as it is within "reasonable comprehension" of being brought. The proceeding need not be in a court, but must be before a "quasi judicial agency" which can render a "dispositive ruling" that can be reviewed in a court. Importantly, this discovery can be sought even if it would not be possible to get it in the foreign country.

While the granting of the relief is discretionary with the district court, the court may not simply deny the relief out of hand. And so, participants in foreign patent proceedings, whether judicial or administrative, where information may be in the possession of a person or entity who "resides or [may be] found" in the US have an interesting and powerful weapon at their disposal.