Suspect misappropriation of your intellectual property rights? Securing evidence may be the way to proceed
By David Brambani
From time to time a business' intellectual property rights may be suspected misappropriated.
- a previous employee has suddenly established a competing company that in short time manages to take over your clients,
- a contract party suddenly offers similar technology to the technology the contract party assisted you developing,
- a competitor appears to deliver a product which is exactly like the one patented by yourself.
In such cases, it is often difficult for the IP rights holder to determine whether its IP rights in fact are misappropriated. Thus, it regularly will be need for access to information. The need for information may by example be due to lack of public information about a product's details - sufficient to conclude whether, or not, all the characteristics of the patented product are included in the product offered by the competitor.
Typically, the need for information will also be a result of the IP rights holder not having access to the basis for the product development that may reveal that trade secrets have been misappropriated. The same applies for the question of whether client lists and/or detailed confidential price lists have been copied and/or misappropriated during client acquisition etc.
But how shall the IP rights holder acquire the required information from a secretive competitor which is reluctant to provide information?
The Norwegian Disputes Act offers remedy.
Firstly, evidence may be secured if the evidence may have significance in a dispute where the person submitting a petition for securing of evidence may become a party, and there is a risk that the evidence may be lost or significantly weakened if not secured. An example of this is cases where the evidence is stored electronically, and it will be easy to delete or manipulate it.
Secondly, evidence can be secured if for other reasons it is particularly important to have access to the evidence before a case has been brought to court. This may be relevant if there is a justified suspicion that someone has caused damage or loss to your business, but there is a lack of concrete documentation on this. An example might be that employees quit and start a competitive business, and it is suspected that they have done so by making use of the previous employer's trade secrets. This will often not be possible to prove without gaining access to electronically stored material in the new business or with the relevant persons.
The implementation of the securing of evidence is usually done by the bailiff. This is most often done through mirror copying of hard drives, PCs, mobile devices and other storage media.
After the securing of evidence has been done, the secured material must be reviewed by an expert. This is done in order to sort out what can potentially be relevant to the case, and to sort out what should be refused presented according to the ordinary rules of evidence in the Disputes Act, such as trade secrets and lawyer correspondence.
How the review of the secured material is to take place in practice is not determined by the Disputes Act but has been left to case law to develop. There are a number of issues that regularly cause disagreement, such as the content of the mandate for the expert who shall review the secured material. This makes the sorting phase demanding. Experience gained from previous cases is therefore important, as there is still limited case law from the courts - and especially from the Supreme Court.
Securing of evidence will regularly be a costly procedure. Thus this procedural remedy is in practice reserved for cases where large values are at stake. We have experience from several cases on securing of evidence and may provide relevant advice in any case where intellectual property may be suspected misappropriated.