Evidence and means of obtaining

General framework

Burden of proof

Generally speaking, the party invoking a fact must prove it and a party who denies a fact must prove its non-existence (Article 54 of theAgreement on the Unified Patent Court).

A party stating a fact which is likely to be disputed must indicate the means of proof making it possible to prove it (rules 13 and 171.1 of the rules of procedure) and produce this evidence if it is disputed (rule 172.1 of the rules of procedure).

It is a principle relatively shared by all member states (Actori incumbit probatio).

If a fact is not disputed, that fact is considered to be just (at least between the parties) (Rule 171.2 of the rules of procedure).

Reversal of the burden of proof

A reversal of the burden of proof is possible (Article 55.1 of theAgreement on the Unified Patent Court) if the subject of a patent is a process for obtaining a new product, and we are looking at whether a product is "infringing".

Likewise, there will be a reversal of the burden of proof if, cumulatively (Article 55.2 of theAgreement on the Unified Patent Court) :

  • we look at the counterfeiting of a manufacturing process for an identical product,
  • the probability is high that the process was used for this manufacture,
  • the applicant has made reasonable efforts to try to determine the process used.

Of course, it must be taken into account that the defendant must protect his trade and business secrets (section 55.3 of theAgreement on the Unified Patent Court).

Duty regarding evidence

Regarding the parties

The parties must present all the elements that could influence the judges when deciding on an order made on motion (Rule 192.3 of the rules of procedure).

Regarding the representative

The representative may not alter the presentation of the facts with full knowledge of the facts or if there are good reasons which should have alerted him (Article 48 of theAgreement on the Unified Patent Court and rule 284 of rules of procedure).

If an agent does so, he may be excluded from the procedure (Rule 291 of the rules of procedure). Note that the sanction is not very severe ...

Possible evidence

The possible means of evidence before the JUB are (rule 170.1 of rules of procedure) :

  1. written evidence;
  2. expert reports and experience reports;
  3. physical objects;
  4. electronic files and audio / video recordings.

Focus on the “Protective Letter”

A "protective letter" is a letter sent by a third party liable to be attacked for infringement in order to present a defense as soon as possible and avoid the judge ordering interim measures which would harm him (Rule 207.1 of the rules of procedure).

This letter must be presented (Rule 207.2 of the rules of procedure) in the language of the patent and must detail, in particular, its arguments (evidence and legal arguments, rule 207.3 of the rules of procedure)

A tax is then payable (rule 207.4 of the rules of procedure).

If one of the formal requirements of rule 207.2 of rules of procedure is not respected, the applicant is informed that he has 14 days to correct his letter (rule 207.5 of the rules of procedure).

This letter is sent to the patent owner (rule 207.8 of the rules of procedure).

Means of obtaining evidence

Judge's investigation orders

Principle

The judge can ask (article 53 of theAgreement on the Unified Patent Court and rule 170.2 of rules of procedure) :

  • hearing the parties;
  • hearing witnesses (under oath or not);
  • hearing experts;
  • comparative tests and experiments.

Focus on witnesses

Voluntary provision of a witness statement

It is entirely possible that a party may decide to admit a witness statement (Rule 175 of the rules of procedure).

This declaration must be signed by the witness (Rule 175.2 of the rules of procedure) and be accompanied by a statement that he understands that lying can make him responsible.

In addition, a declaration concerning conflicts of interest must be present (Rule 175.3 of the rules of procedure).

If the witness statement is disputed (Rule 177.1 (b) of the rules of procedure), the judge may order a hearing.

Request for hearing of witness

A party may request the hearing of a witness (Rule 177.1 (c) of the rules of procedure).

This request must contain (rule 176 of the rules of procedure) :

  • the motivations for this hearing;
  • the facts that we are seeking to confirm through this hearing;
  • the language of the hearing.
Judges' own decision

The judges may decide, on their own initiative, that the hearing of a witness is useful for the case (Rule 177.1 (a) of the rules of procedure).

Contents of order for hearing

The order calling a witness for a hearing must include (Rule 177.2 of the rules of procedure) :

  • the name, address and description of the witness;
  • the date and place of the hearing;
  • an indication of the facts of the action about which the witness is to be questioned;
  • information on the reimbursement of expenses incurred by the witness;
  • a statement that the witness will be examined by the Court and the parties; and
  • the language of the proceedings and the possibility of arranging a simultaneous interpretation between that language and the language of the witness, if necessary (see Rule 109 of the rules of procedure).

In its summons to appear, the Court also informed him of his duties and rights as a witness under sections 178 and 179 rules of procedure (ie obligation to appear, obligation to tell the truth) (rule 177.3 of rules of procedure).

Focus on the experts

Court appointed expert

The court may appoint an expert to shed light on a technical subject (rules 185-188 of rules of procedure) but this situation seems rather improbable since the technical judges normally fulfill this function.

Expert consulted by the parties

Parties are free to produce their own expert reports (Rule 181.1 of the rules of procedure).

It should be noted that the experts must be impartial and not be biased if they are called to a hearing (Rule 181.2 of the rules of procedure).

Focus on tests and experiments

The court may decide to conduct its own tests and trials if so requested by a party without delay (rules 201.1 and 201.2 of rules of procedure).

The opposing party is then invited to rule on this request (Rule 201.3 of rules of procedure).

The court order deciding such tests must include (Rule 201.5 of the rules of procedure) :

  • The contact details of the expert who will conduct the tests and make the report;
  • The time (or period) when the tests will be done;
  • Test conditions;
  • The deadline for submitting the report.

The court may decide that the parties and / or the parties' experts may be present during the tests (Rule 201.6 of the rules of procedure).

By default, and unless otherwise decided, the costs are borne by the party requesting the tests (rule 201.4 of rules of procedure).

Once the report has been drawn up, the parties may comment on this report (Rule 201.7 of the rules of procedure).

The expert who carried it out may be summoned to a hearing to discuss it (Rule 201.7 of the rules of procedure).

Order to present evidence

Judges can also order a party or a third party to produce evidence available to them (Article 53 of theAgreement on the Unified Patent Court and rules 170.3 and 172.2 of rules of procedure).

This order can only be made if a party requests it during the proceedings (Article 59 of theAgreement on the Unified Patent Court and article 6.1 of the Directive on the respect of IP rights 2004/48 / EC). This request must be supported by a sufficient body of evidence (Article 59 of theAgreement on the Unified Patent Court).

This party's request to produce evidence must include (Rule 190.4 of the rules of procedure) :

  • the form of evidence to be produced;
  • before which date this proof must be produced;
  • the sanction requested if proof is not produced.

The person targeted by this order may be the opponent or a third party (section 59 of theAgreement on the Unified Patent Court).

Order to disclose certain information

The judges can also order a party to produce information that it has at its disposal (Articles 53 and 67 of theAgreement on the Unified Patent Court and rules 170.2 and 191 of rules of procedure and article 8.1 of the Directive on the respect of IP rights 2004/48 / EC).

This information can be elements concerning:

  • the origin of counterfeits;
  • the counterfeit mass;
  • etc.

Preservation of evidence

Principle

A judge can order certain measures to preserve evidence (sections 53 and 60 of theAgreement on the Unified Patent Court and rules 192-198 and 170.3 of rules of procedure and article 7 of the Directive on the respect of IP rights 2004/48 / EC).

This order is largely inspired by the French forgery seizure.

Who can request it?

This order can only be made at the request of the patent owner (Article 7.1 of the Directive on the respect of IP rights 2004/48 / EC and section 60.1 of theAgreement on the Unified Patent Court): it cannot therefore be decided ex officio by the judges.

Who should I ask against?

Even if the article and article 60 of theAgreement on the Unified Patent Court is confused on this subject, it seems possible to request this order against any third party.

Indeed, as no action is potentially pending before the JUB, the wording "other party" seems to simply refer to the party seized.

How to request it?

Evidence ?

It is necessary to have a beginning of evidence in order to be able to request this measure (article 7.1 of the Directive on the respect of IP rights 2004/48 / EC and section 60.1 of theAgreement on the Unified Patent Court).

Contradictory?

It can be requested on request (Article 7.1 of the Directive on the respect of IP rights 2004/48 / EC and section 60.5 of theAgreement on the Unified Patent Court) when any delay is likely to cause irreparable harm to the patent owner or when there is a demonstrable risk of destruction of the evidence.

Thus, judges must take into consideration (rule 194.2 of the rules of procedure) :

  • the urgency of the situation;
  • if the reasons for not achieving a contradictory appear well founded;
  • the likelihood of destruction or disappearance of the evidence.

If this is not the case or if the plaintiff cannot prove it, this request will be made in a contradictory manner and the defendant will be called (rule 194.1 of rules of procedure).

Strangely enough, the “protective letter” mentioned above is not mentioned. It is quite logical, however, that this protective letter should influence the judge.

Link to an existing procedure?
Within an existing procedure

It is possible to request a seizure within the framework of an existing procedure (rule 193.2 of the rules of procedure) before this same division (rule 192.1 of rules of procedure).

Under this assumption, it is the formation seized which will decide this request (rule 193.2 of rules of procedure - or more precisely it is the president of the panel who decides who will decide this request, rule 194.3 of the rules of procedure) after a formal examination by the registry (Rule 16 of the rules of procedure).

The language of the procedure must be used (Rule 192.4 of the rules of procedure).

Outside of any procedure

Of course, it is possible to request this measure when no proceedings are pending before the JUB (Article 60.1 of theAgreement on the Unified Patent Court).

The claimant must present his request to the division which seems to him most likely if an action on the merits should start after the seizure (rule 192.1 of rules of procedure)… Nevertheless, the texts do not seem to impose a strong obligation…

The language used must be a possible language before this division (rule 192.4 together rule 14 of rules of procedure).

A judge rapporteur will be designated by the president as the division to decide this request (rules 193.1 together rule 18 of the rules of procedure) and after a formal examination by the registry (rule 16 of the rules of procedure).

However, in order to be able to validly use the elements of the attachment, an action must be brought before the JUB within (Article 60.7 of theAgreement on the Unified Patent Court) (ie the max of the two):

  • 31 calendar days or
  • 20 working days.

Review, appeal and revocation of order

Revision

If the order is granted on motion, the defendant can return to the judge to discuss the scope of the order (variation, repeal or continuation, section 60.6 of theAgreement on the Unified Patent Court and rule 197.3 of rules of procedure) within 30 days of the order being filled.

An oral review procedure is then convened without delay (Rule 197.4 of the rules of procedure).

Call

If the order was granted in a contradictory manner, only an appeal against the order is possible (rule 196.7 and 220.1 of the rules of procedure).

This appeal is made to the court of appeal (rule 220.1 of the rules of procedure).

Revocation

If the plaintiff does not bring an action on the merits within the prescribed time limits, the order may also be challenged for revocation (rule 198 of the rules of procedure) within (max) 31 calendar days or 20 working days after the date indicated in the order for the production of the seizure report.

This revocation decision may include, at the request of the seized party, compensation for the effect of the seizure (rule 198.2 of rules of procedure).

Form of seizure

Seizure may consist of (section 60.2 of theAgreement on the Unified Patent Court) :

  • the detailed description, with or without sampling,
  • the physical seizure of the disputed products and, in appropriate cases, of the materials and instruments used to produce and / or distribute these products,
  • seizure of documents relating thereto.

Person making the entry

The person who will be appointed by the judges to carry out this seizure (article 60.3 of theAgreement on the Unified Patent Court and rules 196.4 and 196.5 of rules of procedure) perhaps :

  • an expert or professional with technical expertise, independence and impartiality;
  • a bailiff if authorized by national law.

The applicant cannot be present during the seizure but he can be represented by a person whose name must be indicated on the order (section 60.4 of theAgreement on the Unified Patent Court).

Guarantee

A guarantee may be requested from the party requesting this attachment in order to compensate the garnishee if necessary (Articles 60.6 and 60.9 of theAgreement on the Unified Patent Court).

Inspection order

A judge can order certain measures to carry out an inspection (articles 53 and 60 of theAgreement on the Unified Patent Court and rules 199 and 170.3 of rules of procedure and article 7 of the Directive on the respect of IP rights 2004/48 / EC).

It is not very clear how the inspection is very different from the preservation of the evidence presented just above but hey…

We will therefore consider that it is the same thing (or at least that it follows the same procedure, rule 199.2 of the rules of procedure).

Order to freeze assets

A judge can order measures to freeze assets (section 61 of theAgreement on the Unified Patent Court and rule 200 of rules of procedure) if reasonable and plausible evidence of counterfeiting is brought.

The procedure is the same as for seizures (rule 200.2 of the rules of procedure).

Confidentiality and evidence

The AJUB provides that certain procedural information can be kept confidential (section 58 of theAgreement on the Unified Patent Court).

Only certain people will be appointed and will have access to this information.

In addition, access to the register may benefit from a certain access control (rule 262 of the rules of procedure).

Otherwise, all the documents provided will be immediately accessible in the online register (Rule 262 of the rules of procedure).

Similarly, the interim procedure or the hearings may be held in camera in the interest of one of the parties (Rule 105.2 of the rules of procedure or rule 115 of rules of procedure).

We can legitimately wonder how confidentiality will be respected for the drafting of the decision, which must be reasoned and public.

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