What you need to know about Search Orders

In England and Wales, New Zealand, Australia and India a party can apply to the High Court for a search order (formerly referred to as an Anton Piller order) to obtain the right to search premises and seize evidence without prior warning.  Search orders are intended to provide a means of preventing destruction of relevant evidence in the case of alleged trademark, patent or copyright infringement.  Similar rights are available in other jurisdictions, such as the saisie-contrefaçon, although we will not look at these in detail here.

Application for a search order is by its nature an ex-party proceeding and since the defendant is not party to the proceedings, search orders are only issued in exceptional circumstances.  To obtain a search order a claimant must show that 1. There is an extremely strong prima facie case against the defendant, 2. The damage/potential damage to the claimant is vert serious and 3. Clear evidence that the defendant has relevant document sin heir possession and there is a real possibility that such documents will be destroyed before an inter-partes application can be made.  The claimant is likely to need to give a number of undertakings to the Court, including an undertaking in damages and security may be required.  Delay in requesting a search order is likely to reduced the chance of obtaining one.

A search order will of course be carried out unannounced and often cause significant disruption to a business. It is important to understand what the process involves, what you should do to prepare your business in advance, and how to behave during execution of the order. This article highlights some of the most important points you need to consider but specialist legal advice should be sought if appropriate.

The first your business will know about a search order is likely to be when a group arrives at your place of business to serve and execute the order.  The group should include an independent supervising solicitor to oversee the search and seizure process and ensure that the search is conducted fairly, and only relevant evidence is seized. 

The first thing to do is to contact your legal team.  The supervising solicitor will have documentation outlining the purpose and nature of their visit. You should ask to see this and also take a copy for your legal team.  The supervising solicitor will explain the terms and effect of the order too.

The documentation should include a list of all documents and items that are subject to the search order, as well as identifying the specific premises to be searched.  The search order should also include a fixed date and time for a second hearing (the return date), at allow the parties to attend court to update the Court as to what happened and raise any issues.

The search order does not entitle the applicant to force entry into the respondent’s premises.  However, if you deny entry, you may be in contempt of court.  You do have a right to obtain legal advice, the right to apply to court to vary or discharge the order and a right to prevent the applicant seeing documents that are privileged.  Generally, up to two hours is considered reasonable to seek legal advice, so it is important that you act immediately to contact your legal team. 

Since this process can be lengthy and a significant delay may be incurred before any search commences, it is advisable to find a meeting room where you can have an initial discussion with the applicant’s solicitors to discuss the order and the mechanics of the search. You should have a colleague in attendance to take notes. Use this meeting to find out from the solicitors exactly what documents and other evidence they wish to see.

Discuss this list with your legal team and identify any documents that can be excluded.  Since they are independent of the applicant, the supervising solicitor can review any privileged documents separately to determine whether or not they can be excluded.

As soon as practical, communicate to all your staff that a search order is underway. Staff should be instructed to cooperate with the inspectors and told firmly not to attempt to destroy, hide or dispose of any documents, whether in hard copy or in any electronic form. Staff should also be reminded not to tell anyone outside your organisation that a search order is taking place.

During the search, the solicitors will likely ask to be taken round your premises in order to locate and inspect relevant documents. You should not refuse their request to do this, but you should make sure that a team of your staff, preferably equal in number to the number of inspectors, goes along too. It is acceptable to insist that the inspectors adhere to all of your relevant health and safety and other procedures as appropriate. 

The solicitors cannot use the search as a ‘fishing exercise’. You are not required to provide any documents which are clearly not relevant. If there is a dispute about the relevance of any document, this should be noted.

The supervising solicitor should produce a list of every item seized, but it is worth your staff tasked with accompanying the inspectors keeping a separate list of all documents provided, where possible. If requested, access must be given to electronic records, computers, phones etc., so having appropriate IT support on hand is useful.  Again, a list of which electronic records have been inspected should be kept, as far as possible.

Generally, you have the right to inspect the list of seized documents before anything is removed from the premises.

If the search runs for more than the working day, you may need to arrange for surveillance for searching carried out overnight.

Once the solicitors have departed, you should meet with your legal advisors, senior staff and those involved in the inspection to debrief and make and define an action plan.  Documents seized should be copied and returned to you of your solicitor within two days.

Some important points to remember:

• Don’t panic
• Don’t refuse entry
• Do cooperate
• Do take the opportunity to seek legal advice before the search commences
• Don’t destroy, hide or dispose of any documents
• Don’t provide documents which are not within the scope of the search
• Don’t provide documents which are legally privileged