Title of the order
- Αποκάλυψη εμπιστευτικών πληροφοριών (Disclosure of Confidential Information)
- Discovery and Tracing Order ("Norwich Pharmacal Order").
Basic procedural framework
The Supreme Court1, in its first instance jurisdiction, is the competent authority under the Cyprus Patent Law (hereinafter PL), to issue these orders.
The applicant will file an application for disclosure of documents within the main proceedings or as an interim application prior to the commencement of the main application.
The bailiff will serve the order on the defendant requiring the submission of the evidence in court.
Provision of evidence by third parties
Within any proceedings under the PL that refer to infringement of a patent, on the application of the interested party, the court may order a third party to submit the evidence in its control.
In Norwich Pharmacal proceedings a third party may be obliged to disclose information or documents which shall assist the claimant to identify the person who is the main cause of the wrongdoing. Subsequently, the court may issue an order for discovery, ordering the defendant to disclose all relevant facts.
Such orders are discretionary and must meet the criteria of Art. 32 of the Courts of Justice Law No. 14/1960. These criteria are:
- it must be held or alleged that a tort has been committed by an alleged infringer;
- there must be a need for an order so as to permit an action to be brought against the alleged infringer; and
- the person against whom the issue of an order is sought is
- involved in such a way as to facilitate the offence; and
- in a position or likely to be in a position to provide the necessary information to enable an action to be brought against the alleged infringer.
Assessment of evidence in support of the application
"Reasonably available evidence" will be assessed at the discretion of the court when a party
- was found to possess infringing goods in commercial quantities or
- was found to use the infringing services on a commercial scale or
- it was established that he offered services infringing the patent on a commercial scale or
- he was identified out by the persons in (a), (b) or (c) above as involved in the production, the manufacture or the distribution of goods or the offer of such services.
Protection of confidential information
Article 62A(3) PL provides that confidential information given under this article is used only as the court order stipulates.
Non-compliance with an order
The competent judicial authority in case of non-compliance is the court that issued the order.
The procedure begins with a filing of an application for contempt of the court. The court may impose penalty payments or imprisonment, payment of damages or writ of attachment2.
The Supreme Court may impose a fine of EUR 59 801 or a term of imprisonment of three years or both or the Court may order any other remedy provided by the law.
If pecuniary compensation is to be paid, the mode of execution of the judgment in the event of default is the issue of a "writ against movables"3 and/or a "memo on immovable property"4 and/or payment by instalments or attachment on property.
The order may be appealed or reviewed by way of an application for writ of certiorari.
For both procedures the period for filing is 14 days from the date of the order. The requests shall be filed before the Supreme Court, exercising its appellate jurisdiction.
Admissibility of evidence
The evidence obtained in other national proceedings (such as criminal, administrative or other civil proceedings) is admissible, provided that the rules of admissibility (such as the test of relevance etc.) are satisfied. Similarly, the evidence obtained in foreign proceedings is admissible if it complies with the Cyprus law relating to evidence.
The EU Regulation and other bilateral agreements signed with other countries with which Cyprus has judicial cooperation, simplify cooperation between the courts of the member states and these other countries, in taking evidence in civil or commercial matters. The EU Regulation is applied in Cyprus without additional formalities.
Legal basis and case law
Patents Law No. 16(I)/1998, Arts. 61, 62A
Civil Procedure Rules
Civil Procedure Law (Cap 6), Article 9
Courts of Justice Law (No. 14/1960), Article 32
Evidence Law (Cap. 9), as amended
Krashias Shoes v Adidas (1989) 1 CLR (E) 750, Safarino v Sun
Shoes (1984) 1 CLR 738
Norwich Pharmacal Co v Customs and Excise (1974) AC133. TBF (Cyprus) Ltd and others v Emporikis Meleton Sxediasmou kai Epichrimatikou Kefalaiou Anonimis Etairias and others (2001) 1 CLR 153.
Avila Management Services Limited and others v Frantisek Stepanek and others (2012) 54/2012 dated 27/6/2012 Mitsui & Co Ltd v Nexen Petroleum UK Ltd (2005) EWHC 625
1. In Cyprus, patent issues and damages relating to patent infringement are tried by the Supreme Court.
2. A writ of attachment is a prejudgment writ of attachment which may be used to freeze assets of a defendant while a legal action is pending. The writ of attachment is issued in order to satisfy a judgment issued by the court.
3. A writ against movables is the confiscation of movables to be sold to pay the damages adjudicated.
4. A memo on immovables is a memo that enables the sale of the immovable property to repay the damages adjudicated.
Originally published by European Patent Academy.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.