Evidence Measures
Purpose of Evidence Measures
Evidence measures consist of the administration of proof by the EPO.
Indeed, there are certain cases where it is necessary to prove facts alleged by the parties (e.g., an oral disclosure whose context or content is not known with certainty, Guidelines E-IV 1.2).
Such evidence measures may be (R117 EPC):
- requested by a party;
- ordered by the EPO on its own motion.
In the event of a challenge to an affidavit, it is generally appropriate to grant a party’s request to hear the witness before such statements form the basis of a decision that is unfavorable to the party contesting them (T474/04).
Various Possible Measures
The possible evidence measures are (A117 EPC):
- hearing the parties;
- requesting information (e.g., a request to a publisher to determine the publication date of a work, Guidelines E-IV 1.2);
- production of documents;
- hearing witnesses;
- expert opinion;
- inspection of premises;
- written declarations made under oath.
Nevertheless, this list is not exhaustive (Guidelines E-IV 1.2).
Preparation of Evidence Measures
Proceedings in Which Evidence Measures May Be Taken
Evidence measures may be taken in any proceedings before the EPO (A117 EPC, the former A117 EPC73 referred to a defined list).
Nevertheless, evidence measures are rare and are mainly used in opposition proceedings (Guidelines E-IV 1.1).
Competence to Take Evidence Measures
Evidence measures are taken by the competent body for the proceedings (e.g., opposition division, etc.).
The competent division may assign one of its members to carry out the evidence measures (A117(2) EPC together with R119(1) EPC): this is particularly useful when an on-site visit is necessary to observe, for example, the operation of a machine (Guidelines E-IV 1.3).
In order to obtain statements under « oath » or another binding form (i.e., criminal penalties being provided for false statements), it is necessary for the EPO to request the competent judicial authorities of the State (A131(2) EPC) in which the person concerned is domiciled to hear that person under such conditions (R120(2) EPC).
Decision Ordering Evidence Measures
All evidence measures are subject to the discretion of the body, which orders them only if it deems them necessary (T798/93).
A decision is taken to this effect (R117 EPC).
This decision is notified to the parties (A119 EPC).
An independent appeal is not possible against this decision, but it may be filed together with the appeal against the final decision (A106(2) EPC and Guidelines E-IV 1.4).
Summons of Parties, Witnesses, or Experts
Principle
When parties, witnesses or experts are summoned to be heard (R118(1) EPC).
Content of the summons
The summons must specify the date and time at which the taking of evidence will take place (R118(2) EPC), bearing in mind that a minimum of 2 months must be allowed.
The summons also states (R118(2) EPC):
- The subject on which these parties (witnesses or experts) will be heard,
- The fact that (R122(2) EPC to R122(4) EPC):
- travel and accommodation expenses will be reimbursed by the EPO;
- a compensation for loss of earnings will be paid by the EPO;
- experts are entitled to remuneration for their work, such remuneration being paid by the EPO (only if they have been summoned by the EPO);
- An indication that the party, witness or expert may be required to give binding testimony before a judicial authority of the State of their domicile pursuant to R120(2) EPC;
- An invitation to respond to the summons to indicate whether they are prepared to appear before the EPO.
Expert’s task
If an expert is appointed, the EPO must:
- specify the form in which their opinion is to be presented (R121(1) EPC);
- communicate their mandate to them (R121(2) EPC), containing:
- a description of their task;
- a time limit for submitting their opinion;
- the name of the parties.
A copy of this opinion will be provided to the parties (R121(3) EPC).
A request for the expert’s disqualification may be filed by a party, and the division shall then decide on such disqualification (R121(4) EPC).
Notification of other parties
All parties may attend the taking of evidence (R119(3) EPC).
The parties must therefore be notified at least 2 months before the taking of evidence (Guidelines E-IV 1.5) and be reminded that they may attend the taking of evidence.
Unsummoned witnesses and experts
At the opening of the taking of evidence, a party may request that an unsummoned witness or expert who is present be heard, specifying the purpose and reasons for which that person should be heard. The body shall then decide on the admissibility of such a request (Guidelines E-IV 1.6.2).
Official Fees
Witnesses or experts appearing before the EPO may request (R122(2) EPC to R122(3) EPC):
- that travel and accommodation expenses be reimbursed (an advance may even be made). It is not necessary that they have been summoned by the EPO (R122(2) EPC);
- that compensation for loss of earnings be paid (R122(3) EPC);
- that their work (for experts only) be remunerated (R122(3) EPC).
The modalities for reimbursement of expenses and payment of compensation and fees are provided for in the « Compensation and fees awarded to witnesses and experts« , JO 1983, 102.
These amounts (excluding advances) are paid at the end of the witness’s or expert’s mission (R122(3) EPC).
If a party has requested such taking of evidence:
- such taking of evidence may be made conditional upon the deposit of a deposit with the EPO (R122(1) EPC; if no deposit is paid despite the EPO’s request, the taking of evidence is not carried out, Guidelines E-IV 1.9);
- that party bears the costs of compensating the witnesses or experts (unless equity requires otherwise, Guidelines E-IV 1.9).
Preservation of Evidence
Upon request, the EPO may take evidence to preserve evidence of facts (R123(1) EPC) if it is believed that subsequent taking of evidence may be more difficult or impossible.
This taking of evidence is possible even outside of any proceedings and must be requested from the body that would be called upon to take a decision based on this evidence (R123(4) EPC).
This may be the case if a witness is about to die or emigrate to a distant country or if a perishable product is made available to the public (Guidelines E-III 2.1).
The applicant/proprietor is notified of this taking of evidence so that they may participate and ask any relevant questions (R123(1) EPC).
The request must contain (R123(2) EPC):
- the indications concerning the requester as provided for in R41(2) c) EPC;
- sufficient indications to identify the European patent application or the European patent in question;
- the indication of the facts that necessitate the taking of evidence;
- the indication of the taking of evidence;
- a statement of the reason justifying the assumption that the taking of evidence may subsequently be more difficult or even impossible.
The request is deemed to have been filed only after payment (R123(3) EPC) of an evidence preservation official fee: [montant_epo default= »70 € » name= »A2(1).17 RFees »] (A2(1).17 RFees).
Minutes of the Taking of Evidence
Minutes are drawn up following the oral proceedings (R124(1) EPC) containing the essential points of the taking of evidence.
If a deposition has been made (e.g., witness, expert), the minutes are read to them (unless they waive this right, R124(2) EPC) and a note is made that they approve or disapprove of them.
These minutes are signed (possibly with an electronic signature) by the officer who drafted them and the chair of the oral proceedings (R124(3) EPC).
A copy of the minutes is sent to the parties (R124(4) EPC).
Language of the instruction
The language of the instruction depends on its form:
- concerning the hearing of witnesses (A117(1) d) EPC), parties (A117(1) a) EPC) or an expert (A117(1) e) EPC), R4(3) EPC applies:
- if they do not have sufficient command of an official language of a contracting state, they may use another language;
- if the instruction is carried out at the request of a party, it is necessary for that party to provide, where applicable, the translation into the language of the proceedings (unless the EPO authorizes the translation into another official language).
- concerning the production of documents (A117(1) c) EPC) and sworn written statements (A117(1) d) EPC), R3(3) EPC applies:
- they may be filed in any language.
- a translation may be required in one of its official languages within a specified period (failing which, the EPO may disregard the document in question).