General Framework
Burden of Proof
As a general rule, the party invoking a fact must prove it, and a party denying a fact must prove its non-existence (Article 54 of the Agreement on a Unified Patent Court).
A party asserting a fact that may be contested must indicate the means of evidence to prove it (Rules 13 and 171.1 of the Rules of Procedure) and produce such evidence if contested (Rule 172.1 of the Rules of Procedure).
This is a principle broadly shared by all Member States (Actori incumbit probatio).
If a fact is not contested, it is deemed to be true (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 the Agreement on a Unified Patent Court) if the subject matter of a patent is a process for obtaining a new product, and it is examined whether a product is infringing.
Similarly, the burden of proof may be reversed if, cumulatively (Article 55.2 of the Agreement on a Unified Patent Court):
- infringement of a process for manufacturing an identical product is examined,
- there is a high probability that the process was used for such manufacture,
- the claimant has made reasonable efforts to determine the process used.
Of course, it must be taken into account that the defendant must protect its manufacturing and business secrets (Article 55.3 of the Agreement on a Unified Patent Court).
Duty Regarding Evidence
Regarding the Parties
The parties must present all elements that could influence the judges in their decision regarding an order issued upon request (Rule 192.3 of the Rules of Procedure).
Regarding the Representative
The representative may not knowingly misrepresent the facts or do so if there were good reasons to be alerted (Article 48 of the Agreement on a Unified Patent Court and Rule 284 of the Rules of Procedure).
If a representative does so, they may be excluded from the proceedings (Rule 291 of the Rules of Procedure). It should be noted that the penalty is not particularly severe…
Possible Evidence
Possible means of evidence before the UPC include (Rule 170.1 of the Rules of Procedure):
- written evidence;
- expert reports and experimental reports;
- physical objects;
- electronic files and audio/video recordings.
Focus on the « Protective Letter »
A « protective letter » is a letter sent by a third party likely to be sued for infringement in order to present a defense as soon as possible and avoid the judge ordering provisional measures that could prejudice them (Rule 207.1 of the Rules of Procedure).
This letter must be submitted (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).
An official fee is then payable (Rule 207.4 of the Rules of Procedure).
If one of the formal requirements of Rule 207.2 of the Rules of Procedure is not met, the applicant is informed that they have a period of 14 days to correct their letter (Rule 207.5 of the Rules of Procedure).
This letter is forwarded to the patent proprietor (Rule 207.8 of the Rules of Procedure).
Means of Obtaining Evidence
Court Investigation Orders
Principle
The judge may request (Article 53 of the Agreement on a Unified Patent Court and Rule 170.2 of the Rules of Procedure):
- the hearing of the parties;
- the hearing of witnesses (under oath or not);
- the hearing of experts;
- comparative tests and experiments.
Focus on Witnesses
Voluntary Submission of a Witness Statement
A party may decide to submit a witness statement to the proceedings (Rule 175 of the Rules of Procedure).
This statement must be signed by the witness (Rule 175.2 of the Rules of Procedure) and accompanied by a declaration stating that they understand that lying may render them liable.
Furthermore, a declaration regarding conflicts of interest must be submitted (Rule 175.3 of the Rules of Procedure).
If the witness statement is contested (Rule 177.1(b) of the Rules of Procedure), the judge may order a hearing.
Request for a Witness Hearing
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 reasons for this hearing;
- the facts that the hearing seeks to establish;
- the language of the hearing.
Judges’ Own Initiative
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).
Content of the order for a hearing
The order summoning 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 regarding which the witness is to be examined;
- 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 proceedings and the possibility of arranging simultaneous interpretation between this language and the witness’s language, if necessary (see Article 109 of the Rules of Procedure).
In its summons order, the Court also informs the witness of their duties and rights as a witness under Articles 178 and 179 of the Rules of Procedure (i.e., obligation to appear, obligation to tell the truth) (Rule 177.3 of the Rules of Procedure).
Focus on experts
Court-appointed expert
The court may appoint an expert to provide clarification on a technical matter (Rules 185-188 of the Rules of Procedure), though this situation appears unlikely since technical judges normally fulfill this role.
Expert consulted by the parties
The parties may produce their own expert reports (Rule 181.1 of the Rules of Procedure).
It should be noted that experts must be impartial and free from bias if summoned 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 experiments if requested without delay by a party (Rules 201.1 and 201.2 of the Rules of Procedure).
The opposing party is then invited to comment on this request (Rule 201.3 of the Rules of Procedure).
The court’s order deciding on such tests must include (Rule 201.5 of the Rules of Procedure):
- The contact details of the expert who will conduct the tests and prepare the report;
- The time (or period) when the tests will be conducted;
- The conditions of the tests;
- 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 the Rules of Procedure).
Once the report is prepared, the parties may comment on it (Rule 201.7 of the Rules of Procedure).
The expert who prepared the report may be summoned to a hearing to discuss it (Rule 201.7 of the Rules of Procedure).
Order to Produce Evidence
The judges may also order a party or a third party to produce evidence in its possession (Article 53 of the Agreement on a Unified Patent Court and Rules 170.3 and 172.2 of the Rules of Procedure).
Such an order may only be issued if a party requests it during the proceedings (Article 59 of the Agreement on a Unified Patent Court and Article 6.1 of the IP Enforcement Directive 2004/48/EC). This request must be supported by sufficient evidence (Article 59 of the Agreement on a Unified Patent Court).
The party’s request to produce evidence must include (Rule 190.4 of the Rules of Procedure):
- the form of the evidence to be produced;
- the deadline by which the evidence must be produced;
- the requested sanction if the evidence is not produced.
The person subject to this order may be the opposing party or a third party (Article 59 of the Agreement on a Unified Patent Court).
Order to Disclose Certain Information
The judges may also order a party to produce information in its possession (Articles 53 and 67 of the Agreement on a Unified Patent Court and Rules 170.2 and 191 of the Rules of Procedure and Article 8.1 of the IP Enforcement Directive 2004/48/EC).
This information may include elements concerning:
- the origin of the infringements;
- the scale of the infringement;
- etc.
Order to Preserve Evidence
Principle
A judge may order certain measures to preserve evidence (Articles 53 and 60 of the Agreement on a Unified Patent Court and Rules 192-198 and 170.3 of the Rules of Procedure and Article 7 of the IP Enforcement Directive 2004/48/EC).
This order is largely inspired by the French *saisie-contrefaçon*.
Who May Request It?
This order may only be requested by the patent proprietor (Article 7.1 of the IP Enforcement Directive 2004/48/EC and Article 60.1 of the Agreement on a Unified Patent Court): it may therefore not be ordered *ex officio* by the judges.
Against Whom May It Be Requested?
Although Article 60 of the Agreement on a Unified Patent Court is unclear on this point, it appears possible to request this order against any third party.
Indeed, as no action is potentially pending before the UPC, the wording “other party” seems simply to refer to the party against whom the order is sought.
How to Request It?
Evidence?
It is necessary to provide prima facie evidence in order to request this measure (Article 7.1 of the IP Enforcement Directive 2004/48/EC and Article 60.1 of the Agreement on a Unified Patent Court).
Ex Parte?
It may be requested on an ex parte basis (Article 7.1 of the IP Enforcement Directive 2004/48/EC and Article 60.5 of the Agreement on a Unified Patent Court) where any delay is likely to cause irreparable harm to the patent proprietor or where there is a demonstrable risk of destruction of evidence.
The judges must take into consideration (Rule 194.2 of the Rules of Procedure):
- the urgency of the situation;
- whether the reasons for not holding inter partes proceedings appear well-founded;
- the likelihood of destruction or disappearance of the evidence.
If this is not the case or if the applicant fails to prove it, the request will proceed on an inter partes basis and the defendant will be summoned (Rule 194.1 of the Rules of Procedure).
Somewhat surprisingly, the « protective letter » mentioned above is not referenced. It is nevertheless quite logical that this protective letter would influence the judge.
Connection with an Existing Proceeding?
Within an Existing Proceeding
It is possible to request an evidence seizure in the context of an existing proceeding (Rule 193.2 of the Rules of Procedure) before the same division (Rule 192.1 of the Rules of Procedure).
Under this scenario, the panel seized will rule on this request (Rule 193.2 of the Rules of Procedure – or more precisely, the presiding judge of the panel will decide who will rule on 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 proceeding must be used (Rule 192.4 of the Rules of Procedure).
Outside Any Proceeding
Naturally, it is possible to request this measure where no proceeding is pending before the UPC (Article 60.1 of the Agreement on a Unified Patent Court).
The applicant must file the request before the division that appears most likely if an action on the merits were to commence after the seizure (Rule 192.1 of the Rules of Procedure)… however, the texts do not appear to impose a strict obligation…
The language used must be a possible language before that division (Rule 192.4 in conjunction with Rule 14 of the Rules of Procedure).
A judge-rapporteur will be appointed by the presiding judge of the division to rule on this request (Rules 193.1 in conjunction with 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 validly use the elements obtained through the seizure, it is necessary to initiate an action before the UPC within a period of (Article 60.7 of the Agreement on a Unified Patent Court) (i.e., the longer of the two):
- 31 calendar days or
- 20 working days.
Review, Appeal, and Revocation of the Order
Review
If the order is granted ex parte, the defendant may approach the judge to discuss the scope of this order (modification, revocation, or maintenance, Article 60.6 of the Agreement on a Unified Patent Court and Rule 197.3 of the Rules of Procedure) within 30 days following the execution of the order.
A review oral hearing shall then be convened without delay (Rule 197.4 of the Rules of Procedure).
Appeal
If the order was granted on an inter partes basis, only an appeal against the order is possible (Rules 196.7 and 220.1 of the Rules of Procedure).
This appeal is made before the Court of Appeal (Rule 220.1 of the Rules of Procedure).
Revocation
If the applicant does not initiate proceedings on the merits within the prescribed time limits, the order may also be challenged by way of revocation (Rule 198 of the Rules of Procedure) within (max) 31 calendar days or 20 working days after the date specified in the order for the submission of the seizure report.
This revocation decision may include, upon request by the seized party, compensation for the effect of the seizure (Rule 198.2 of the Rules of Procedure).
Form of the seizure
The seizure may consist of (Article 60.2 of the Agreement on a Unified Patent Court):
- a detailed description, with or without the taking of samples,
- the physical seizure of the infringing products and, where appropriate, of the materials and implements used in the production and/or distribution of those products,
- the seizure of related documents.
Person carrying out the seizure
The person who will be appointed by the judges to carry out this seizure (Article 60.3 of the Agreement on a Unified Patent Court and Rules 196.4 and 196.5 of the Rules of Procedure) may be:
- an expert or professional with technical expertise, independence, and impartiality;
- a bailiff if permitted by national law.
The applicant may not be present during the seizure but may be represented by a person whose name must be indicated in the order (Article 60.4 of the Agreement on a Unified Patent Court).
Provision of security
A provision of security may be required from the party requesting the seizure in order to compensate the seized party if necessary (Articles 60.6 and 60.9 of the Agreement on a Unified Patent Court).
Order for inspection
A judge may order certain measures to carry out an inspection (Articles 53 and 60 of the Agreement on a Unified Patent Court and Rules 199 and 170.3 of the Rules of Procedure and Article 7 of the Directive on the enforcement of IP rights 2004/48/EC).
It is not entirely clear how the inspection differs significantly from the preservation of evidence described above, but there it is…
We will therefore consider it to be the same thing (or at least that it follows the same procedure, Rule 199.2 of the Rules of Procedure).
Order for freezing assets
A judge may order measures to freeze assets (Article 61 of the Agreement on a Unified Patent Court and Rule 200 of the Rules of Procedure) if reasonable and plausible evidence of infringement is provided.
The procedure is the same as for seizures (Rule 200.2 of the Rules of Procedure).
Confidentiality and Evidence
The UPC Agreement provides that certain information in the proceedings may be kept confidential (Article 58 of the Agreement on a Unified Patent Court).
Only certain individuals will be designated and may have access to such information.
Furthermore, access to the register may be subject to certain access controls (Rule 262 of the Rules of Procedure).
Otherwise, all documents submitted will be immediately accessible in the online register (Rule 262 of the Rules of Procedure).
Similarly, interim proceedings or 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 the Rules of Procedure).
We may legitimately question how confidentiality will be maintained in the drafting of the decision, which must be reasoned and public.