Almost invariably, defendants in a patent lawsuit seek to examine the inventors of the patent or patents in issue. But, what do you do if an inventor resides in Canada? Generally, non-Canadian courts are not able to assert personal jurisdiction over Canadians and, therefore, cannot compel them to give evidence under oath for the purposes of a lawsuit. If a Canadian witness does not willingly provide evidence, commission evidence may be sought via the enforcement of what are called “letters of request”. Essentially, these represent a foreign court’s request that a Canadian court order someone to appear and be examined under oath.
The enforcement of such requests is a matter of discretion for a Canadian court and is by no means a slam dunk. Enforcement is generally granted where both specific legal requirements, and public policy objectives, are satisfied. It is important to ensure that letters of request are designed to satisfy such legal requirements, and it is wise to have a Canadian lawyer help with their preparation. The legal requirements for enforcement are generally summarized below.
- The examination is authorized by a foreign court of competent jurisdiction.
- The Canadian court has jurisdiction over the potential witness.
- The evidence sought relates to the foreign case. This means it is important to get into the foreign case and the reason the witness’ evidence is required.
- The evidence sought is relevant and necessary, and cannot be obtained through other means. This later feature – that it cannot be obtained through other means – is something foreign lawyers often overlook.
- The scope of examination is sufficiently constrained and any document requests are sufficiently specific. The letters of request cannot be overly broad or seek to permit a fishing expedition.
- The request does not contradict Canadian public policy.