A Notice to Produce

What is a Notice to Produce?

A Notice to Produce is a formal request made during legal proceedings that requires a party to hand over specific documents.

• It is used to check whether a party has documents that could be important to the issues in dispute.

• If the documents are relevant, they must be provided.

• If they are not relevant, a court or other venue can excuse compliance.

Use in Intellectual Property (IP) Matters

In proceedings before IP Australia (such as trade mark or patent oppositions), a Notice to Produce can be used to obtain documents from a party that may help prove or disprove a claim.

In Trade Mark Cases:

• A party might issue a Notice to Produce to see documents about how a mark has actually been used (for example, invoices, advertising material, or sales records).

• This can be critical in “non-use” actions or disputes about whether a trade mark has built up a reputation.

  
  

In Patent Cases:

• Notices to Produce are often aimed at documents showing how an invention was developed, whether prior art was considered, or whether claims of novelty/inventive step hold up.

• But the request must be tied to the issues (such as the priority date* or the common general knowledge at the time). Fishing for irrelevant documents—like in the Abbey v Virbac case—will likely be rejected.

  
  

*Priority date is the date on which an invention's details are first disclosed in a patent application

Case Summary – Abbey v Virbac (No 2) [2025] FCA 1082

• Parties: Abbey Laboratories sought to revoke Virbac’s patent relating to cattle parasite treatments.

• Grounds: Abbey argued the patent lacked novelty and an inventive step.

• Expert evidence: Abbey relied on reports from Dr Fadil Alawi, a veterinary pharmaceutical formulator. He claimed that between 2019–2022 he had worked on 5–9 projects for Abbey.

• Notice to Produce: Just two weeks before a hearing, Virbac served a Notice to Produce, demanding Abbey hand over documents about the 5–9 projects.

• Problem:

  • The projects were unrelated to the patent.

  • They took place years after the patent’s priority date (2011).

  • Any views expressed later wouldn’t affect what was known in 2011.

    
    

• Decision: Justice Jackman held that the documents weren’t relevant. Abbey didn’t have to comply, and Virbac had to pay Abbey’s costs.

Key Takeaways

• A Notice to Produce is not a fishing licence: it can only be used to get documents that directly relate to the issues.

  
  

• Courts and IP Australia will only enforce a Notice to Produce if the documents could reasonably help resolve the dispute.

  
  

• In IP matters, especially trade mark and patent disputes, it can be a powerful tool to test the other side’s claims about use, novelty, or inventive step—but it must be targeted and relevant.

Anny Slater

13 September 2025