Author: Louise AMAR

Louise Amar is a junior lawyer at Amar Goussu Staub. She graduated from the University of Kent (LLB in English and French Law), the Université Paris I Panthéon Sorbonne (Licence) and the University of London, School of Oriental and African Studies (LLM in Law Development and Governance). She completed her Legal Practice Course at BPP London in 2015. Louise has been managing the UPC Blog since 2013.
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Italy has signed the Protocol on the Provisional Application of the UPCA and other -good- news about ratification:

UK ratifies the UPC Agreement

On 20th February, at the EU Competitiveness Council, Italy signed the UPC Agreement on the Provisional Application. (See our post here on the Protocol). The Protocol on Provisional Application allows  “final decisions on the practical set up of the Court” to enter into application. This includes for example the “recruitment of judges and testing of IT systems“and  the registration of opt-out demands. So far 12 countries (including Italy) have signed it.

 

This was not the only  progress towards the UPC becoming operational that occurred recently:

  • On 8th February 2017 the German Parliament examined the draft legislation authorizing the ratification of the UPCA.
  • On 13th February 2017, the Spanish Socialist Worker’s party (PSOE)  called on the Spanish government to reconsider joining  the UPC.  It argues that not taking part in the Unitary Patent package is detrimental to the competitiveness and innovation of Spanish companies.  It notes that, regarding the language requirements, Spanish companies would not be in a different position than before the EPO.  The PSOE finally contends that Spain should asks for the transfer of the London seat of the UPC central division to Spain.

 

Télécharger (PDF, Unknown)

 

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The UK Supreme court, IP Federation and Protocol on Privileges and Immunities

The UK Supreme Court announced last week that the UK Government could not trigger article 50 without Parliamentary approval. The ruling was followed by the publication by the UK government of the Brexit bill , for a vote in Parliament next week, while the actual trigger of article 50 is planned for the end of March. However, Theresa May’s speech which preceded the Supreme Court’s ruling has left many wondering about the actual possibility for the UK to remain a member of the UPC once it has left the EU.

In fact, although the UK government expressed its support for the ratification of the UPCA  many questions remain. Indeed, neither Baroness Neville Rolfe’s announcement  nor the intervention of the new Minister of State for Universities, Science, Research and Innovation (Jo Johnson),  clarify whether it is possible for a state which is a Member of the European Union when the UPCA comes into force, to remain a contracting state after it leaves the European Union, whether the UPCA could be amended to allow  for any non-EU members to become UPC members, or what will happen to the London central division if the UK cannot remain a member of the UPC. Mr Johnson only stated that the UK’s decision to proceed with ratification  “should not be seen as pre-empting the UK’s objectives or position in the forthcoming negotiations with the EU”.  Overall he highlighted that the aforementioned questions will only be answered by the Brexit negotiations.

However, with the UPC planned to become operational in December 2017,  the question of the continuity of UK’s participation to the UPC once it has left the EU is central for all users of the court and future unitary patent applicants.

In this regard, the UK IP Federation issued two statements . In its first statement dated December 2016, it urges contracting states to “work together to enable the UK to stay in the system after Brexit and to prepare transitional provisions in case this is not possible“. It further calls for  “legal instruments to be developed that enable the UK to remain part of the system or for appropriate reassurances to be provided if this is not thought necessary” and “upon the UK and the other contracting states to work together urgently to provide a legally secure route by which the UK can remain in the UPC after Brexit.”  In case the UK cannot remain part of the UPC after Brexit the IP Federation asks the UK government to “provide assurances that any Unitary Patents will be recognised as UK national patents. The UK and other contracting states will also need to produce transitional arrangements to govern what will happen to ongoing litigation at the UPC and to ensure the continued functioning of the court.”

In its second statement dated January 2017, the signatories which describe themselves as “IP intensive companies in the United Kingdom”  list 7 specific demands and notably that “all accrued and pending intellectual property rights (…) be preserved in the UK post-Brexit;” that “(t)he UK (…) provide(s) for the ability to obtain equivalent UK rights in the UK post-Brexit”, and that once the UPC is established “the involvement of non-EU, European Patent Convention Contracting States (e.g. Switzerland, Norway) in the UPC (…) (is) explored”. 

To the best of our knowledge, these statements have not been publicly answered by the UK government. This is not to say however that the UK is not making progress on the ratification of the UPCA, as showed by the fact that the Protocol on Priviledges and Immunities was laid in Parliament on 20th January 2017 in the form of a Command Paper (government publications presented to parliament) and an explanatory memorandum. This protocol will ensure that the UPC judges benefit from the privileges and immunities necessary to their function and to the operation of the UPC.

 

 

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The UPC to become operational in December 2017: The new timetable for the UPC start of operation

The Preparatory Committee published a new timetable for the UPC’s start of operation, indicating that:

  • The Provisional Application Phase would start at the end of Spring 2017 (presumably in May). It will allow for judicial interviews to take place and appointments to be confirmed.

 

  • The possibility to opt-out European patents will start in early September.

 

  • The UPCA would enter into force in December 2017.

 

  • The UPC would thus become operational in December 2017 too.

 

The Preparatory Committee however warns that this timetable is “conditional and provided with the clear disclaimer that there are a number of factors that will dictate whether it is achievable. The most important factors in meeting these dates is the necessary ratifications of the UPCA and accession to the Protocol on Provisional Application.”

It is expected that the next meeting of the Committee which will take place in March gives more details and updates as to whether the UPC will effectively become operational in 2017.

 

More on the Provisional Application Phase:

On 1st October 2015 a protocol to the UPCA was signed by some member states to allow  “final decisions on the practical set up of the Court” to enter into application such as the “recruitment of judges and testing of IT systems“, or the very much talked-about early registration of opt-out demands. The protocol aims at permitting a smoother set up of the court.

It will enter into force after 13 states, that have already signed and ratified the UPCA, approve the protocol either by signing or approving it. So far 9 Member States have signed it (Germany, Denmark, France, UK, Hungary, Luxembourg, Romenia, Slovenia, Sweden) . The UK has however entered a reservation, stating that it “shall not provisionally apply Article 4 of the Agreement on a Unified Patent Court.”

As a reminder, Article 4 provides that ” (1) The Court shall have legal personality in each Contracting Member State and shall enjoy the most extensive legal capacity accorded to legal persons under the national law of that State. (2) The Court shall be represented by the President of the Court of Appeal who shall be elected in accordance with the Statute.”

For more information see our posts on the Protocol on provisional application of the Unified Patent Court Agreement here and its update here.

 

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The UK gives green light to ratification of the UPCA

Brexit and the German constitutional challenge

The Preparatory Committee made public on 28th November 2016 the UK’s confirmation that it is proceeding with preparations to ratify the Unified Patent Court Agreement (UPCA).

The Preparatory Committee announced on the UPC website that “(t)his is welcome news. It will allow the Committee to pick up pace on all fronts, in particular, facilitating the planning of when we can expect to have the required number of ratifications to allow the Agreement to enter into force.”

The UK government, on the other hand, justified this move towards ratification in its press statement as beneficiary to the industry at large:“The new system will provide an option for businesses that need to protect their inventions across Europe. The UK has been working with partners in Europe to develop this option.

As the Prime Minister has said, for as long as we are members of the EU, the UK will continue to play a full and active role. We will seek the best deal possible as we negotiate a new agreement with the European Union. We want that deal to reflect the kind of mature, cooperative relationship that close friends and allies enjoy. We want it to involve free trade, in goods and services. We want it to give British companies the maximum freedom to trade with and operate in the Single Market – and let European businesses do the same in the UK.

But the decision to proceed with ratification should not be seen as pre-empting the UK’s objectives or position in the forthcoming negotiations with the EU.”

For more info on the new timetable for the UPC published by the UPC see here.

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A general update on the ratification progress in the 26 signatories of the UPCA:

UK ratifies the UPC Agreement

The Institute of Professional Representatives before the EPO (epi) has published a table summarizing the state of the ratification and the planned local, regional and central divisions of the UPC.

Beyond the 11 countries (Austria, Belgium, Bulgaria, Denmark, Finland, France, Luxembourg, Malta, Netherlands, Portugal, and Sweden) which have ratified the UPCA and deposited their instrument of ratification, the 15 remaining states can be divided between those that have made progress towards ratification, and those that have either come to a standstill or have not yet started the process of ratification.

I. Countries which have the least satisfactory record for ratification:

Cyprus: No progress with regard to ratification.

Czech Republic: According to the epi, although no progress has taken place regarding ratification “a study is expected to be carried out on the impact of the UPC on Czech firms and on the Czech economy and budget.“

Croatia: The position of the new government on joining the enhanced cooperation in view of taking part in the UPC is awaited.

Greece: No progress with regard to ratification.

Hungary: No progress with regard to ratification but “(a) study on the impact of the UPC on the Hungarian economy, ordered by the Hungarian Patent Office, was conducted by PWC. The outcome of this study was negative. However, a new study, ordered by the Ministry of Justice, as the competent body, is under preparation by EY. The result of the study will not be binding.“

Ireland: The new Irish government has shown no political willingness to organise a referendum for the ratification of the UPC.

Poland: After participating to the enhanced cooperation, Poland decided not to sign the UPCA. Its position has not changed.

Slovak Republic: No progress regarding ratification. the Slovak government “will wait until the system is operational. Officials are discussing whether a study on the impact of the UPC on the Slovak economy should be conducted. There are concerns about the increase in density of patents, the level of the fees and the pro-patent approach of the UPC. The Ministry of Justice will look into the CJEU decisions.“

Spain: The position of the new government on the unitary patent package is awaited.

II. Countries that have moved towards ratification :

Estonia: According to the epi, the Estonian Ministry of Justice “has made a draft law for ratification. This has been circulated at the end of September 2016 among Estonian patent attorneys for opinion. The date for ratification is not yet known.“

Germany: The ratification bill has been brought before Parliament. More here.

Italy: “On 30 Sept 2015 Italy has joined the unitary patent and became the 26th member of the enhanced cooperation on unitary patent protection. After approval by the Government, the Italian Parliament (…) has approved the UPCA ratification instrument.” Italy has not yet however ratified the UPCA. More on the italy participation to the UPC here, here, here, and here.

Latvia: According to the epi, the Ministry of Justice  had planned “to submit documents on the ratification to the Cabinet of Ministers in the first half of year 2016“.  Latvia has not however ratified the UPC yet.

Lithuania: “Draft legislation to ratify the UPCA, to amend the patent law and to establish the regional division has been submitted to Parliament.” However, the epi indicates that due to the coming elections, the UPCA ratification is not expected before spring 2017. More here.

Romania: “In Romania, the ratification process is ongoing. The Protocol on provisional application was signed on 14 September 2016. (…) Ratification by Romania is expected to be finished in the second half of 2016.“

Slovenia: “In Slovenia the legislation for ratification of the UPCA has been approved by Parliament. The Government is expected to deposit the instrument of ratification shortly, as it announced at the meeting of the EU Competitiveness Council on 29 September 2016.“

III. Situation of the UK:

The UK  adopted the Statutory Instrument [SI] in March 2016. See here. This SI adapts the national patent law with respect to the UP and the UPC. It will enter into force when the UPCA enters into force. A second SI is required to implement to the Protocol on Privileges and Immunities. This is expected to be finished within short time.

However, now that the UK has decided to leave the EU it is unclear whether it will ratify the UPCA. The epi emphasises that “(t)he UK may only continue to participate in the Unitary Patent by entering into a new international agreement with the participating EU Member States. Further, it is legally possible for the UK to continue to participate in the UPC after “Brexit” and to host the Life Sciences/Chemistry section of the court, but changes would have to be made to the UPC Agreement.” And finally, “(t)he UK’s continued participation would require it to submit to EU law regarding proceedings before the Court. It would also need to sign up to an appropriate jurisdiction and enforcement regime“.

The UPC Blog has looked in depth at the multilayered issues surrounding Brexit and the UPC, which you can find here:

“What is the impact of the UK’s referendum on its EU membership on the UPCA?”

“What future for the UPC now that the UK has voted to leave the EU?”

“The future of the Unitary Patent package as seen by the EPO”

“UK’s IPO update on Brexit”

“More on Brexit from the AIPPI”

“An inquiry into the effect of Brexit on the UPC and UP“

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A new local division in Milan and an update on judicial recruitment:

The Unified Patent Court announced that the Italian local division location had been chosen by the Italian authorities and will be ready by mid-June 2017.  It will be hosted within the premises of the new Milan Courthouse, and pictures of the building can be viewed here.

This new location completes the list published by the Unified Patent Court in February 2016 and commented on our blog, which includes the locations of:

  • The court of Appeal in Luxembourg,
  • The central (Munich) and local (Munich, Mannheim, Dusseldorf and Hamburg) divisions in Germany,
  • The Nordic-Baltic regional division in Stockholm, and
  • The central division in London. However, the UK’s decision to leave the EU jeopardizes the existence of a UPC division in the UK, and it seems very likely that the chemistry and pharmaceuticals central division will be relocated to a different country.

Regarding the judges who will be sitting in these courts, the UPC has announced that the recruitment timetable has been revised in light of the Brexit, and it appears that no appointment will be made in early 2017, as originally announced.

In fact, as explained by the UPC, “(w)hilst the preparation of candidates’ selection has continued, the commencement of the next phase which would include calling candidates for interview, has to be re-scheduled as the appointment procedure, which will be led by the future Committees of the UPC, is dependent on the entry into force of the Protocol on Provisional Application and subsequently the Agreement on the Unified Patent Court” …

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An inquiry into the effect of Brexit on the UPC and UP:

Brexit and the German constitutional challenge

The British government has announced at the Tory Party Conference on Sunday 02nd October that article 50 will be triggered by the end of March 2017. The government also gave details of a “Great Repeal Bill“, which would repeal the 1972 European Communities Act – the law that binds EU law to the British statute book – and  transpose EU legislation into British law in its entirety.

Among the legal issues that the British government will have to handle in the coming months, the UK’s participation to the UPC is of course a major concern for UK and EU IP lawyers.

The UPC Blog has already looked at this issue and its versatile political environment in different posts here.

This post however focuses specifically on the unequivocal -though not definite- legal answers on the UK’s participation to the UPC and UP brought by two barristers from Brick Court Chambers, Richard Gordon QC and Tom Pascoe, in their opinion on the legal consequences  of Brexit “on the Unitary Patent Regulation and the Unified Patent Court Agreement”. This opinion was commissioned by the IP Federation, the Chartered Institute of Patent Attorneys and the Intellectual Property Lawyers Association who have all expressed their support for the UK’s participation to the UPC after Brexit.  20 UK law firms  (among who Simmons & Simmons, Linklaters, Herbert Smith Freehills, CMS UK, Gowling WLG, Bird & Bird, Collyer Bristow, Browne Jacobson and European IP firms Carpmaels & Ransford and EIP) have also backed this inquiry into UK’s post-Brexit UPC membership.

 

Télécharger (PDF, 264KB)

 

Richard Gordon and Tom Pascoe’s opinion answers six questions:

1a. Can the UK continue to be part of the UP?

“The UK may only continue to participate in the unitary patent by entering into a new international agreement with the participating EU Member States. The permissibility of such an agreement under EU law would turn upon essentially the same matters as the legality of the UK’s continuing participation in the UPCA.”

1b. Can the UK continue to participate in the UPCA?

“It is legally possible for the UK to continue to participate in the UPCA after ‘Brexit’ (although the CJEU’s reasoning in Opinion 1/09 is opaque and there is therefore a risk that the CJEU would find otherwise).”

1c. Can the UK continue to host the Life Sciences/Chemistry section of the central division?

“Provided that it is legally possible for the UK to continue to participate in the UPCA, there is no reason why it cannot continue to host a section of the central division.”

2. What changes would have to be made to the UPCA?

“A number of amendments would have to be made to the Agreement” by way of amendments to the UPCA and separate international agreements. Pascoe and Gordon consider that five amendments need to be made in the UPCA at article 1, 2(c), 21, 29, 84 and 88. An international agreement would also need to be entered into between the UK and the Union for the CJEU to accept preliminary references. Finally the UK will need to consider its options for replacing the Brussels Regulation, with notably the Lugano Convention.

3. What would the UK have to sign up to?

“The UK’s continued participation in the UPCA would require it to submit to EU law in its entirety as regards proceedings before the UPC. It would also need to sign up to an appropriate jurisdiction and enforcement regime (such as the Lugano Convention).”

4. Does it matter whether the UK joins the EEA?

“Our advice does not depend upon whether the UK joins the EEA.”

5. Is it possible or desirable to obtain an opinion from the CJEU?

“It would only be possible to obtain a pre-emptive opinion from the CJEU on the legality of the UPCA if the Union became a party to the Agreement.”

6.What would be the consequences of Brexit if the UK ratifies the UPCA without amendment?

“If the UK ratified the UPCA, without amendment, and subsequently left the EU, any divisions of the UPC in the UK would have to cease operating. The transitional consequences of this are matters of detail to be negotiated as part of the UK’s exit negotiations.”

 

Gordon and Pascoe conclude that after Brexit: the UK may only continue to participate in the unitary patent by entering into an international agreement with the EU and its Member States, and in the UPC so long as it signs the UPCA. On the other hand if the UK ratified the UPCA without amendment while still a member of the EU, the UK divisions of the UPC would have to cease operating once the UK leaves the EU. The authors also highlight the role of the CJEU who might reach different conclusions. However, according to Gordon and Pascoe, it would only be possible to obtain a pre-emptive opinion from the CJEU on the legality of the UPC if the Union became a party to the Agreement.

 

Finally, it is important to point out that the British government’s decision to trigger article 50 is being challenged by the People Challenge group, a group of “concerned British Citizens” (You can read the story behind this case here). A hearing will take place next week to decide whether the government can rely on the royal prerogative or whether an act of Parliament must be passed to allow the government to trigger article 50.

Last week, the People Challenge group were granted the right to publish the Government’s defense documents. The People Challenge group’s skeleton arguments as well as UK Government’s detailed grounds of resistance can be found below.

It is however impossible to say whether, were the Court to decide that only Parliament can invoke article 50, this would have any impact on Brexit and let alone on the UK’s participation to the UPC.

 

  •  The People Challenge group’s skeleton argument:

Télécharger (PDF, 554KB)

 

  • The UK Government’s detailed grounds of resistance :

Télécharger (PDF, 1015KB)

 

 

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A guide to: Evidence -Step 3: Grant and Revocation of an order

The tables below look at the different types of orders, the conditions of enforceability, the carrying out of the measures and the conditions the defendant must meet to obtain the revocation of an order to preserve evidence or an order for inspection. 

 

 

Order on the Application for preserving evidence (Rule 196):

Order on the Application for preserving evidence (Rule 196):
4 types of order:

The Court may order:

• preserving evidence by detailed description, with or without the taking of samples;

• physical seizure of allegedly infringing goods;

• physical seizure of the materials and implements used in the production and/or distribution of these goods and any related document;

• the preservation and disclosure of digital media and data and the disclosure of any passwords necessary to access them.

For the protection of confidential information the Court may order that any of the above be disclosed only to certain named persons and subject to appropriate terms of non-disclosure.

An order to preserve evidence shall specify that, unless otherwise ordered by the Court, the outcome of the measures to preserve evidence may only be used in the proceedings on the merits of the case.
Conditions of enforceability:

• The order to preserve evidence shall be enforceable immediately, unless the Court decides otherwise.
• The Court may set conditions to the enforceability of the order:

o who may represent the applicant when the measures to preserve evidence are being carried out and under what conditions;

o any security which shall be provided by the applicant. If necessary, the Court may set penalties applicable to the applicant if these conditions are not observed.
The carrying out of the measures:

• The order to preserve evidence shall specify a person who shall carry out the measures.

• The person carrying out the measures shall be a professional person or expert, who guarantees expertise, independence and impartiality.

• Where appropriate and allowed under applicable national law, the person may be a bailiff or assisted by a bailiff.

• This person shall present a written Report on the measures to preserve evidence, all in accordance with the national law of the place where the measures are executed, to the Court within a time period to be specified.

• In no circumstances may an employee or director of the applicant be present at the execution of the measures.
Security:

• The Court may order the applicant to provide adequate security for the legal costs and other expenses and compensation for any injury incurred or likely to be incurred by the defendant which the applicant may be liable to bear.

• The Court shall decide whether it is appropriate to order the security by deposit or bank guarantee.
Appeal:

The order to preserve evidence shall indicate that an appeal may be lodged in accordance with Article 73 of the Agreement and Rule 220.1.

 

Order to preserve evidence without hearing the defendant (Rule 197):

Order to preserve evidence without hearing the defendant (Rule 197):
Order:

The Court may order measures to preserve evidence without the defendant having been heard in particular:

• where any delay is likely to cause irreparable harm to the applicant
• where there is a demonstrable risk of evidence being destroyed or otherwise ceasing to be available.
Hearing:

Where measures to preserve evidence are ordered without the defendant having been heard, Rule 195 (see the oral hearing table) shall apply mutatis mutandis to the oral hearing without the presence of the defendant.

The defendant shall be given notice, immediately at the time of the execution of the measures.
Review:

Within 30 days after the execution of the measures, the defendant may request a review of the order to preserve evidence.

The Request for review shall set out:
• the reasons why the order to preserve evidence shall be revoked or modified;
• the facts and evidence relied on.

The Court shall order an oral hearing to review the order without delay. Rule 195 shall apply.

The Court may modify, revoke or confirm the order.

In case the order is modified or revoked the Court shall oblige the persons to whom confidential information has been disclosed to keep this information confidential.
Security:

• The Court shall order the applicant to provide adequate security for the legal costs and other expenses and compensation for any injury incurred or likely to be incurred by the defendant which the applicant may be liable to bear, unless there are special circumstances not to do so.

• The Court shall decide whether it is appropriate to order the security by deposit or bank guarantee.

 

Revocation of an order (Rule 198):

Revocation of an order (Rule 198):
Time limit:

Upon request of the defendant, The Court shall revoke an order to preserve evidence without prejudice to the damages which may be claimed, if:

• within a time period not exceeding 31 calendar days or 20 working days, whichever is the longer, from the date specified in the Court’s order with due account to the date where the Report of the person carrying out the measures shall be presented, the applicant does not start proceedings on the merits of the case before the Court.
Compensation:

Where the measures to preserve evidence are revoked, or where they lapse due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement of the patent, the Court may order the applicant, upon request of the defendant, to provide the defendant appropriate compensation for any injury caused by those measures.

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A guide to: Evidence -Step 2: Examination of the Application

The tables below look into the three stages of the examination process after the lodging of the application for an order to preserve evidence or order for inspection.

 

Examination of the Application by the Registry (Rule 193)

 
Where the Application is lodged before the main proceedings on the merits of the case:Formal examination by Registry (Rule 16):

• The Registry shall check and inform the applicant whether the patent concerned is the subject of an opt-out. In the event of an opt-out the applicant may withdraw or amend the Application.

• The Registry shall, after the lodging of the Application, examine whether the requirements of the contents (Rule 13), use of languages (Rule 14) and fees (Rule 15) for the Application have been complied with.

• If the claimant has not complied with these requirements the Registry shall invite the claimant to:
o correct the deficiencies within 14 days of service of such notification; and
o where applicable, pay the fee for the order to preserve evidence within said 14 days.

• The Registry shall at the same time inform the applicant that if the applicant fails to correct the deficiencies or pay the fee within the time stated:
o a decision by default may be given, in accordance with Rule 355.
o the Registry shall inform a judge of the division who may reject the action as inadmissible by a decision by default. The judge may give the applicant an opportunity to be heard beforehand.



Recording in the register and assignment (Rule 17):

If the requirements of the contents (Rule 13), use of languages (Rule 14) and fees (Rule 15) have been complied with, the Registry shall:

• record the date of receipt of the Application and attribute an action number to the file;

• record the file in the register; and

• inform the applicant of the action number of the file and the date of receipt.

The action shall be assigned to a panel of a division according to Rule 345.3. Where requested by the parties the action shall be assigned to a single judge in accordance with Rule 345.6.



Designation of the Judge-Rapporteur (Rule 18):

The presiding judge of the panel to which the Application has been assigned shall designate one legally qualified judge of the panel as judge-rapporteur.

The presiding judge may designate himself as judge-rapporteur.

The Registry shall notify the applicant and defendant of the identity of the judge-rapporteur.
Where the Application is lodged after the main proceedings on the merits of the case:The Application for preserving evidence shall immediately be examined by the Registry and forwarded to the panel to which the action has been assigned to or to the judge to whom the action has been assigned.



Formal examination by Registry (Rule 16):

• The Registry shall check and inform the applicant whether the patent concerned is the subject of an opt-out. In the event of an opt-out the applicant may withdraw or amend the Application.

• The Registry shall, after the lodging of the Application, examine whether the requirements of the contents (Rule 13), use of languages (Rule 14) and fees (Rule 15) for the Application have been complied with.

• If the claimant has not complied with these requirements the Registry shall invite the claimant to:
o correct the deficiencies within 14 days of service of such notification; and
o where applicable, pay the fee for the order to preserve evidence within said 14 days.

• The Registry shall at the same time inform the applicant that if the applicant fails to correct the deficiencies or pay the fee within the time stated:
o a decision by default may be given, in accordance with Rule 355.
o the Registry shall inform a judge of the division who may reject the action as inadmissible by a decision by default.

The judge may give the applicant an opportunity to be heard beforehand.

 

Examination of the Application by the Court (Rule 194)

Examination of the Application by the Court (Rule 194)

 
The Court shall have discretion to (Rule 194 (1)):
Summon the applicant to an oral hearing without the presence of the defendant.Inform the defendant about the Application and invite him to lodge, within a time period to be specified, an Objection to the Application for preserving evidence which shall contain:

• the reasons why the Application shall fail;

• the facts and evidence relied on, in particular any challenge to the facts and evidence relied on by the applicant;

• where main proceedings on the merits of the case have not yet been started before the Court, the reasons why the action which will be started before the Court shall fail and an indication of the facts and evidence relied on in support.
Decide the Application without having heard the defendant.Summon the parties to an oral hearing.
In exercising its discretion, the Court shall take into account (Rule 194 (2)):
The urgency of the action.

Whether the reasons for not hearing the defendant appear well-founded.

The probability that evidence may be destroyed or otherwise cease to be available.

 

Oral hearing (Rule 195)

Oral hearing (Rule 195)
• Where the Court decides to summon the parties to an oral hearing, the date for the oral hearing shall be set as soon as possible after the date of receipt of the Application for preserving evidence.

• Rules 111 to 116 governing the oral procedure (Role of the presiding judge, Conduct of the oral hearing, Duration of the oral hearing, Adjournment, Oral hearing, Absence by a party from the oral hearing) shall apply.

• Where the applicant is absent from the oral hearing without a reasonable excuse, the Court shall reject the Application for preserving evidence.

• The decision of the Court on the Application for preserving evidence shall be given in writing as soon as possible after the closure of the oral hearing. If the Court deems appropriate, the decision may be given orally to the parties at the end of the oral hearing but shall as soon as practicable thereafter be given in writing.
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A guide to: Evidence -Step 1: Lodging the Application:

The tables below look into the prerequisites for lodging the Application for an order to preserve evidence or order for inspection.

 

Language of the Application
(Rule 192(4))
Where the Application is lodged before the main proceedings on the merits of the case:The Application shall be drawn up:
• In the official language or one of the official languages designated as languages of proceedings pursuant to Article 49(1) of the Agreement.
• In a language designated as language of the proceedings by a Contracting Member State pursuant to Article 49(2) of the Agreement.
• See also Rule 14.2,3,4 (For Contracting Member States that host a local or regional division for which several languages have been designated)
Where the Application is lodged after the main proceedings on the merits of the case:The Application shall be drawn up in the language of the proceedings.

 

Content of the Application (Rule 192 (2) & (3))
Particulars in accordance with Rule 13:

The claimant shall lodge the Application with the division chosen by him which shall contain:

• the name of the applicant, and, where the applicant is a corporate entity, the location of its registered office, and of the applicant’s representative;

• the name of the defendant, and, where the defendant is a corporate entity, the location of its registered office;

• postal and electronic addresses for service on the applicant and the names of the persons authorised to accept service;

• postal and, where available, electronic addresses for service on the defendant and the names of the persons authorised to accept service, if known;

• where the applicant is not the proprietor or not the only proprietor of the patent concerned, postal and where available, electronic addresses for service on the proprietor and the names and addresses of the persons authorised to accept service, if known;

• where the applicant is not the proprietor of the patent concerned, or not the only proprietor, evidence to show the applicant is entitled to commence proceedings;

• details of the patent concerned, including the number;

• where applicable, information about any prior or pending proceedings relating to the patent concerned before the Court including any action for revocation or a declaration of non-infringement pending before the central division and the date of any such action, the European Patent Office or any other court or authority;

• an indication of the division which shall hear the action with an explanation of why that division has competence; where the parties have agreed in accordance with Article 33(7) of the Agreement, the indication of the division which shall hear the action shall be accompanied by evidence of the defendant’s agreement.
Particulars in accordance with Rule 192:

A clear indication of the measures requested:

• preserving evidence by detailed description, with or without the taking of samples/ physical seizure of allegedly infringing goods /physical seizure of the materials and implements used in the production and/or distribution of these goods and any related document / the preservation and disclosure of digital media and data and the disclosure of any passwords necessary to access them.

• The measure requested must include the exact location of the evidence to be preserved where it is known or suspected with good reason.



The reasons why the proposed measures are needed to preserve relevant evidence

The fact and evidence relied on in support of the Application



Where the Application is lodged before the main proceedings on the merits of the case (Rule 192 (3)):

The Application shall contain a concise description of the action which will be started before the Court, including an indication of the facts and evidence which may be relied on in support.

 

Lodging of the Application for preserving evidence
(Rule 192 (1) &(5))

 
Where the Application is lodged before the main proceedings on the merits of the case:The Application shall be lodged at the division where the applicants intends to start proceedings on the merits.

The applicant shall pay the fee for the Application for preserving evidence (amount no yet known). The Application shall not be deemed to have been lodged until the fixed fee for the order to preserve evidence has been paid.
Where the Application is lodged after the main proceedings on the merits of the case:The Application shall be lodged at the division where the applicant has commenced infringement proceedings on the merits.

The applicant shall pay the fee for the Application for preserving evidence (amount no yet known). The Application shall not be deemed to have been lodged until the fixed fee for the order to preserve evidence has been paid.