Legal Commentary

Evidence, experts and witnesses at the UPC

The Unified Patent Court (“UPC” or “Court”) means a new court and thus new rules of procedure. Let’s look more specifically at the means of evidence that will be accepted before the UPC.

12 May 2022 by Simmons & Simmons LLP

Means of evidence: great flexibility is guaranteed

Article 54 of the Unified Patent Court Agreement (“UPCA”) provides for the classic procedural rule according to which the burden of proof of facts rests on the party relying on those facts. However, a reversal of the burden of proof is provided in Article 55 of the UPCA for patents covering a process for obtaining a new product, as is found in art. 34 TRIPS.

To meet the burden of proof, the parties may use different means of evidence as defined in the UPCA. Before looking at the content of this extended toolbox, which is not necessarily available in every national jurisdiction, the means of evidence should be viewed in perspective of various articles of the Rules of procedures (“RoP”) that serve to complement the UPCA.

Rules 171 and 172 of the RoP stipulate that a party alleging a statement of fact that is contested, or likely to be contested by the other party, must produce available evidence. By contrast, a statement of fact, that is not specifically contested by any party, shall be held to be true as between the parties. As a result, the UPC will not be able to issue a decision based on a fact which has been contested and for which the party presenting this fact has not been able to provide evidence. However, it is not very clear what the consequences are if a party fails to meet the requirement to produce “available evidence” which may raise some interpretation issues, and it will be interesting to obtain clarification in that respect.

That being said, Article 53 of the UPCA provides for a long list of evidence that the parties can use in the context of their dispute before the UPC. This list includes the following means of evidence: hearing the parties, requests for information, production of documents, hearing witnesses, opinions by experts, inspections, comparative tests or experiments, sworn statements in writing (affidavits). It is worth noting that this list is not exhaustive so that parties will also be able to rely on other means of evidence if they are not satisfied with the above-mentioned list.

There is no hierarchical order of importance as between the various types of evidence. However, due to the tight timeframe of the proceedings before the UPC, approximately one year for the first instance infringement and the validity proceedings, pursuant to the preamble of the RoP, some means of evidence will be more readily used than others.

 

Means of obtaining evidence: large prerogatives of the Court and protection of confidential information

In addition to the evidence submitted by each party in support of their respective claims in the context of a litigation, additional evidence may be obtained through investigative measures authorized by the Court.

Article 59 of the UPCA states that the Court can order a party, or even a third party, to produce evidence or documents, upon request of the other party.

The Court will order the adverse party or third party to produce evidence, provided that evidence lies in the control of the other party or third party. In order to protect the interests of the party subject to this Court’s order, safeguards are provided. Said party, or third party, has the opportunity to be heard by the Court pursuant to Rule 190.3 of the RoP. The interests of each party are to be taken into account, and if the request for producing evidence is granted, the Court shall take the necessary measures to protect the confidentiality of such information by ordering, for example, that the evidence be disclosed to certain named persons only, and be subject to appropriate terms of non-disclosure.

Pursuant to Article 60 of the UPCA, the Court, may issue an order to preserve evidence and/or to inspect premises. Such measures may include a detailed description, with or without taking of samples, or the physical seizure of the infringing products, and, in appropriate cases, the materials and implements used in the production and/or the distribution of those products and the documents relating thereto as well as the inspection of premises. To obtain such order, the plaintiff has to present reasonably available evidence to support the claim that the patent has been infringed or is about to be infringed. Once the Court grants this request, the measures may be conducted before the commencement of the proceedings or in the course of the proceedings in order to preserve evidence while ensuring the protection of confidential information. In order to guarantee the full effectiveness of this measure, the order can be obtained ex-parte.

While it is possible at the UPC to obtain measures to preserve evidence ex parte, the applicant will have to explain why this is necessary. Rules 197 (1) states that the Court “may” do so, in particular where any delay is likely to cause irreparable harm to the applicant or where there is a demonstratable risk of evidence being destroyed or otherwise ceasing to be available.  In such case, the defendant may, within 30 days after the execution of the measures, request a review of the order to preserve evidence (Rule 197 (3) RoP).

French lawyers will find this means of obtaining evidence familiar as it is similar to the saisie-contrefaçon procedure widely used in France to search for evidence. However, the two regimes are not strictly identical. For instance, evidence collected during a saisie-contrefaçon can be used in foreign proceedings, whereas the use of evidence collected during an inspection must be limited to use in the proceedings on the merits of the case, unless otherwise ordered by the Court pursuant to Rule 196.2 of the RoP.

 

Experts and witnesses: a closer look

A party may provide written witness statements as well as written expert opinions in the proceedings, but may also request that a witness and/or expert be heard in person. Indeed, although the majority of evidence is likely to be provided in writing before the UPC, evidence can also be provided orally through the examination of witnesses and experts. In order to do so, the party must apply for the hearing of a witness and/or expert in person, with the particular reasons why the witness and/or expert should be heard in person, including the facts which the party expects the witness to confirm pursuant to Rule 176 of the RoP (also applicable to the parties’ experts according to Rule 181 of the RoP).

Apart from cases where the party requests that a witness and/or expert intervene orally, the witness and/or expert may also be heard in person if the Court orders it of its own motion, or where a written statement is challenged by the other party pursuant to Rules 177 and 181 of the RoP. The questioning of witnesses and experts is under the control of the Court and is limited to what is necessary in accordance with Article 53 of the UPCA.

Not entirely dissimilar to the cross-examination procedure, as it is understood in the framework of English law procedure, experts may be directly questioned. This constitutes an additional means of evidence, compared with certain national procedures where it is lacking, as for example in France, where witness opinions are simply submitted in writing. In jurisdictions, such as the UK, expert evidence and cross-examinations are critical.

Additionally, in the event where the UPC considers that the evidence presented by the parties in the dispute is not sufficient, and needs to resolve a specific technical or other question, it may obtain additional evidence through the appointment of a Court expert in accordance with Article 57 of the UPCA and Rule 185 of the RoP, as is for example standard practice in Italian proceedings.

Court experts must submit a written report to the Court,  which the parties will have the opportunity to comment on pursuant to Article 57 UPCA. The Court experts may also, pursuant to Rule 186 of the RoP, be required to attend the oral hearing. If so, they must answer the Court and parties’ questions. The Court provides an indicative list of Court experts.

One can rightly assume that this additional means of evidence, which the Court can implement  itself, is more likely to be used when no technically qualified judge is on the panel.

 

Conclusion

The UPC provides for various types and means of evidence, mostly inherited from continental litigation tools, but also coloured by Anglo-Saxon procedural rules. These should sufficiently support the proper administration of justice. They also provide for discretion and flexibility. We thereby expect at least some national influence and customary application of the evidentiary rules and procedures within local divisions, especially in experienced divisions which will have a panel of two local judges and one foreign judge. Where possible, this may be used by parties to benefit from (expected) beneficial local approaches.