Litigation: Securing evidence outside a lawsuit
As a non-EU member state, Norway is not bound by the provisions of Directive 2004/48/EC of the European Parliament and of the Council of April 29 2004 on the enforcement of IP rights.
Norway has implemented the TRIPS agreement and according to our Dispute Act section 28-2 a petition of securing evidence may be filed where evidence can be significant in a dispute, and there is either a clear risk that the evidence will be lost or considerably impaired, or there are other reasons why it is particularly important to obtain access to the evidence before a lawsuit is instigated. If there is reason to fear that notice to the opposite party could obstruct the securing of evidence, the court may decide that the securing of evidence shall be carried out before the opposite party is heard (inaudita altera parte).
The petition can give the petitioner access to secret information without giving any clear and legitimate reason why he is in need of such evidence. The evidence includes judicial examination of parties and witnesses as well as allowing access to and examination of real evidence, e.g. documents such as non-public patent applications and research information.
The court must therefore weigh the need to secure the evidence in question up against the respondent's trade secrets rights, which obviously is quite a complicated call to make. If a party or witness refuses to provide access to evidence, arguing that the information cannot be made available without revealing trade or business secrets, the court has to balance the relevant interests and, then it may or may not allow the evidence, as the case may be.
Perhaps the best way to counterclaim such petitions is to request that the court impose a duty of confidentiality and that oral hearing of the evidence shall be held in camera. It is recommendable to claim that all the persons attending the hearing is mentioned by name in the court decision of duty of confidentiality in order to be responsible if confidential information is violated.
It remains to be seen how strictly these rules will be applied by the Norwegian courts. There is obviously a risk of unjust decisions, triggered by false or misleading information on the need to secure evidence.
By Lill A. Grimstad and Cecilie Bakken, Attorneys-at-Law, Bryn Aarflot AS
Published in Managing Intellectual Property, December/January Edition 2009/2010
