Purpose of the investigative measures
The instruction is the administration of evidence by the EPO.
In fact, there are certain cases where it is necessary to prove facts alleged by the parties (eg an oral disclosure whose context or content is not known with certainty). E-IV 1.2 Directives).
This instruction can be (R117 EPC):
- requested by a party;
- decided by the EPO.
In the event of a challenge to a certificate, it is generally appropriate to grant a request from a party to hear the witness, before these statements are based on a decision that is unfavorable to the party challenging them (T474 / 04).
Different possible measures
The possible instruction measures are (A117 CBE):
- the hearing of the parties;
- the request for information (eg request from a publisher to know the date of publication of a book, E-IV 1.2 Directives);
- production of documents;
- the hearing of witnesses;
- the descent on the premises;
- written statements made under oath.
Nevertheless, this list is not exhaustive (E-IV 1.2 Directives).
Preparation of the instruction
Procedure during which an instruction can be carried out
Nevertheless, the measures of instruction are rare and are mainly used in opposition (E-IV 1.1 Guidelines).
Competence to carry out this instruction
The investigation is carried out by the competent authority for the procedure (eg opposition division, etc.).
The competent division may instruct one of its members to proceed with the measures of inquiry (A117 (2) EPC together R119 (1) EPC): this is especially useful when a field trip is necessary in order to see, for example, the operation of a machine (E-IV Guidelines 1.3).
In order to obtain "swearing" or other binding declarations (ie criminal sanctions for falsehoods), it is necessary for the EPO to request the competent judicial authorities of the State (A131 (2) EPC) in which the person concerned has his domicile to hear him under these conditions (R120 (2) EPC).
Decision ordering the investigation
All the measures of inquiry are subject to the discretion of the court, which orders them only if it deems it necessary (T798 / 93).
A decision is made to this effect (R117 EPC).
This decision is served on the parties (A119 EPC).
Citation of parties, witnesses or experts
Where parties, witnesses or experts are called in order to be heard (R118 (1) EPC).
Content of the citation
The quotation must indicate the date and time at which the instructional measure will be made (R118 (2) EPC), knowing that a minimum of 2 months must be left.
The quote also mentions (R118 (2) EPC):
- the subject on which these parties (witnesses or experts) will be heard,
- the fact that (R122 (2) EPC at R122 (4) EPC):
- transport and accommodation costs will be reimbursed by the EPO;
- compensation for loss of profits will be paid by the EPO;
- the experts are entitled to remuneration for their work, the remuneration being paid by the EPO (only if they have been cited by the EPO);
- an indication that this party, witness or expert, may be required to make a compelling testimony before a judicial authority of the State of his domicile according to the R120 (2) EPC ;
- an invitation to reply to this quote to indicate whether he is willing to appear before the EPO.
If an expert is appointed, the EPO must:
- specify the form of return of his opinion (R121 (1) EPC);
- communicate to him his mandate (R121 (2) EPC) containing:
- a description of his mission;
- a time limit to give his opinion;
- the names of the parties.
A copy of this notice will be given to the parties (R121 (3) EPC).
A request for recusation of the expert may be made by a party and the division then decides on this challenge (R121 (4) EPC).
Information to other parties
All parties may attend the investigative measure (R119 (3) EPC).
The parties should therefore be informed at least 2 months before the instruction measure (E-IV 1.5 Guidelines) and are reminded that they can attend this inquiry.
Witnesses and experts not called
At the opening of the investigative measure, a party may request that a witness or expert not cited, but present, be heard, indicating for what purpose and for what reasons that person is to be heard. The authority then decides on the admissibility of such a request (Directives E-IV 1.6.2).
- transport and accommodation costs are reimbursed (an advance can even be made). They need not have been summoned by the EPO (R122 (2) EPC);
- compensation for loss of earnings be paid (R122 (3) EPC);
- that their work (for experts only) is remunerated (R122 (3) EPC).
The procedures for the reimbursement of expenses and the payment of allowances and fees are provided for by the " Indemnities and fees paid to witnesses and experts », OG 1983, 102.
These amounts (excluding advances) are paid at the end of the mission of the witness or expert (R122 (3) EPC).
If a party has requested this instruction:
- this instruction may be subject to the filing with the EPO of a provision (R122 (1) EPCif no provision is made despite the request of the EPO, the investigative measure is not carried out, E-IV Guidelines 1.9);
- it bears the costs of compensation for witnesses or experts (unless equity requires otherwise, E-IV Guidelines 1.9).
Preservation of evidence
On request, the EPO may implement an investigative measure in order to preserve the evidence (R123 (1) EPC) if one can think that the subsequent instruction is no longer difficult or impossible.
This measure of investigation is possible even outside any procedure, and must be requested from the body that would be called upon to make a decision with the help of this evidence (R123 (4) EPC).
This may be the case if a witness is about to die or to immigrate to a distant country or if a perishable product is available to the public (Directives E-III 2.1).
The applicant / holder is notified of this measure of instruction so that he / she can participate and ask any relevant questions (R123 (1) EPC).
The request must contain (R123 (2) EPC):
- the particulars concerning the applicant as provided for in R41 (2) (c) EPC ;
- sufficient information to enable the identification of the European patent application or European patent at issue;
- the indication of the facts which require the measure of instruction;
- the indication of the instruction measure;
- a statement of the reason justifying the presumption that the instruction may be later difficult or even impossible.
A report is drawn up following the oral procedure (R124 (1) EPC) containing the essential points of the instruction.
If a statement has been made (eg witness, expert), the report is read to him (if he does not waive this right, R124 (2) EPC) and a statement is made that he approves or disapproves of it.
This PV is signed (possibly with an electronic signature) by the agent who drafted it and the chairman of the oral proceedings (R124 (3) EPC).
A copy of the minutes is sent to the parties (R124 (4) EPC).
Language of instruction
The language of 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) the R4 (3) EPC applies:
- if they do not have sufficient command of an official language or a Contracting State, they may use another language;
- if the investigation is carried out at the request of a party, it is necessary that the party provide, if necessary, the translation into the language of the proceedings (unless the EPO authorizes translation into another official language).
- concerning the production of documents (A117 (1) (c) EPC) and written declarations under oath (A117 (1) (d) EPC) the R3 (3) EPC applies:
- they can be produced 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).