Preparatory Committee re-opens judges recruitment campaign

UPC Judges recruitment 2019

The Unified Patent Court published on 3rd June has announced that the Preparatory Committee has agreed to re-open recruitment for judicial positions to new applications“. This will be the second recruitment campaign after the first in 2016.

The 2019 campaign is a “‘top-up’ exercise to complement the recruitment held three years ago” . As in 2016, this campaign aims at finding legally and technically qualified judges.

This new campaign should also” allow those that were not eligible, or decided not to apply three years ago, to submit an application provided they now meet the correct criteria.

The job adverts for legally and technically qualified judges read :

“Legally qualified judges to serve at the Court of First Instance or at the Court of Appeal – several full-time and part-time posts –
– 6-year terms –

The successful candidates will be part of a new supranational court and contribute decisively by their judicial work and highest standards of competence to ensure that the UPC becomes a widely respected forum for settling patent disputes in the Contracting Member States of the European Union.

Candidates shall be nationals of one of the Member States having signed the UPCA. To be appointed, the successful candidates shall be nationals of Member States having ratified the UPCA. They shall have a good command of at least one official language of the European Patent Office (English, French or German), shall ensure the highest standards of competence and shall have proven experience in the field of patent litigation. Specific training in patent litigation according to Art. 2(3) of UPCA Statute will also be accepted.

Candidates shall possess the qualifications required for appointment to judicial offices in the Member State of which they are nationals. Reference is made to the official information provided in the Information on the selection process of UPC judges. 

In addition, the ideal candidate will have:
–      extensive experience in the field of patent litigation,
–      initiative, high degree of commitment and self-motivation and a proactive approach to ensure efficiency and high quality of proceedings at the UPC,
–      the ability to work both independently and as part of a judicial panel or specialist team, and to meet tight deadlines,
–      well-developed written, verbal and interpersonal communication skills,
–      strong analytical skills,
–      the capacity to work in a multinational and multilingual environment.

Salary and benefits: The UPC offers attractive salaries, allowances, social benefits and a pension scheme comparable to that offered at other intarnational courts. The net monthly salary for this vacancy is of EUR 11 000 for full-time judges at the Court of First Instance and of 12 000 for full-time judges at the Court of Appeal. 

Technically qualified judges to serve at the Court of First Instance and at the Court of Appealseveral part-time posts –
– 6-year terms –

The successful candidates will be part of a new supranational court and contribute decisively by their judicial work and highest standards of competence to ensure that the UPC becomes a widely respected forum for settling patent disputes in the Contracting Member States of the European Union.

Qualifications: Candidates shall be nationals of one of the Member States having signed the UPCA. To be appointed, the successful candidates shall be nationals of Member States having ratified the UPCA. They shall have a good command of at least one official language of the European Patent Office (English, French or German), shall ensure the highest standards of competence and shall have proven experience in the field of patent litigation.

Candidates shall have

  • a university degree,
  • proven expertise in a field of technology and
  • proven knowledge of civil law and procedure relevant in patent litigation.

Specific training in patent litigation according to art 2(3) of UPCA Statute will also be accepted. In addition, the ideal candidate will have

  • extensive experience in the field of patent litigation
  • initiative, high degree of commitment and self-motivation and a proactive approach to ensure efficiency and high quality of proceedings at the UPC,
  • the ability to work both independently and as part of a judicial panel or specialist team, and to meet tight deadlines,
  • well-developed written, verbal and interpersonal communication skills,
  • strong analytical skills,
  • the capacity to work in a multinational and multilingual environment.

Salary and benefits: The UPC offers attractive salaries allowances, social benefits and a pension scheme comparable to that offered at other international courts. The net monthly salary for this vacancy is of EUR 11 000 for Court of First Instance judges (full-time equivalent). ” 

As for the process and timeline the ad specifies that “the successful candidates will be selected on the basis of qualifications and relevant experience, supplemented by interviews. Appointments will be made by the UPC’s Administrative Committee. ” Both dealines for application are midnight CET 29.07.2019

How are trade secrets protected under the UPC Agreement?

TRADE SECRETS under the UPC Agreement

How are trade secrets protected at national level within the EU?

The protection of trade secrets is an essential guarantee for the protection of intellectual property. However, until recently, EU Member States offered very different levels of protection for confidential information. Directive EU 2016/943 adopted in June 2016 thus aimed at harmonizing national legislations.

Indeed, as highlighted by the directive, “there is a higher risk for businesses in Member States with comparatively lower levels of protection, due to the fact that trade secrets may be stolen or otherwise unlawfully acquired more easily. This leads to inefficient allocation of capital to growth-enhancing innovation within the internal market because of the higher expenditure on protective measures to compensate for the insufficient legal protection in some Member States. It also favours the activity of unfair competitors who, subsequent to the unlawful acquisition of trade secrets, could spread goods resulting from such acquisition across the internal market. Differences in legislative regimes also facilitate the importation of goods from third countries into the Union through entry points with weaker protection, when the design, production or marketing of those goods rely on stolen or otherwise unlawfully acquired trade secrets. On the whole, such differences hinder the proper functioning of the internal market.”
All industries should thus benefit from the homogenization of trade secrets at EU level .

Although, while the directive transposition deadline was set for 6th June 2018, EU Member States have actually implemented it at different paces. Companies have however already seized the opportunity to rely on it. In France for example, the Paris Court of Appeal held on 9th October 2018 the first French decision relying on the transposition of the directive (see the decision below). In this case LGE had asked the Court to order Conversant Wireless to present confidential evidence, who opposed it. The Paris Court of Appeal granted LGE‘s request, considering that the confidentiality conditions provided by article L. 153-1 of the French Code of commerce, which transposes EU directive 2016/943, would adequately protect the trade secrets contained in the confidential evidence at stake.

The protection of trade secrets and confidential information is a problem that will similarly arise before the UPC.

How will trade secrets be protected by the UPC?

The UPC Agreement provides for different measures to protect confidential information, at articles 45, 52, 58, 59 and 60.

Article 45 allows the UPC to arrange for private proceedings, and article 52 provides that the UPC may, with the agreement of the parties, dispense with the oral hearing. Article 58 grants the Court the power to order the prohibition or restriction of the collection and use of evidence, while articles 59 and 60 subject the Court’s power to present and preserve evidence as well as inspect premises, subject to the protection of confidential information.

However, the UPC Agreement also contains provisions that may be more challenging for the protection of trade secrets.

Article 10 for example states that the register shall be public (though article 45 provides for private proceedings) . Article 80 adds that the Court may, at the request of the applicant, order the display or publication of the decision.

But what about Non-Disclosure Agreements?

The UPC Agreement does not say anything about Non-Disclosure Agreements. The UPC Rules of Procedure on the other hand specify when the parties can request such agreements.

Hence, when the UPC must give an order “to produce evidence” (Rule n°190), “on the application for preserving evidence” (Rule n°196), or “for inspection” (Rule n°199), measures to preserve the confidentiality of the information at stake can be granted by the Court. Such measures restrict the disclosure of the information “to certain named persons only and be subject to appropriate terms of non-disclosure“.

Rule n°190 for example states: “Where a party has presented reasonably available and plausible evidence in support of its claims and has, in substantiating those claims, specified evidence which lies in the control of the other party or a third party, the Court may on a reasoned request by the party specifying such evidence, order that other party or third party to produce such evidence. For the protection of confidential information the Court may order that the evidence be disclosed to certain named persons only and be subject to appropriate terms of non-disclosure. (Emphasis added)

Rule n°105, 115, 197 and 262 also provide for the Court to adapt respectively the interview conference, oral hearing, order to preserve evience and public access to the register. These guarantee that the information is kept “to the extent necessary, confidential in the interests of one or both parties or third parties or in the general interests of justice or public order“.

Rule n°105 for example provides:

” 1. The interim conference should, where practicable, be held by telephone conference or by video conference. 2. On request by a party, subject to paragraph 1 and the approval of the judge-rapporteur, the interim conference may be held in Court. If the interim conference is held in Court, it shall be open to the public unless the Court decides to make it, to the extent necessary, confidential in the interests of one or both parties or third parties or in the general interests of justice or public order. “

The UPC Agreement and the UPC Rules of Procedure thus, in a similar way than EU member states, transpose the EU directive 2016/943. The UPC Agreement is thus drafted to guarantee that trade secrets are not stolen or otherwise unlawfully acquired. Nonetheless, it will now be for the UPC to apply its discretion and decide consistently when to use the measures provided for in the UPC Agreement and in the UPC Rules of Procedure.

Representative, you shall…What is the proposal for the UPC’s code of conduct saying?

After much debate about the UPC Code of Conduct and the publication of a letter by the Council of Bars and Law societies of Europe (see our post here) highlighting the potential tensions between national codes of conduct and the UPC code of conduct, its proposal has been made public by the Preparatory Committee on the Unified Patent Court’s website.

As explained in its preamble, the code of conduct has been drafted by a working group comprising the EPLAW, EPLIT and epi which “undertook a comparative study of existing professional laws to identify the needs as well as the limitations for regulations within the Code of Conduct”.

The proposed code of conduct has therefore been divided into four articles covering issues related to its field of application, the representatives’ general conduct, witnesses and experts, and change of representation.

Regarding its field of application and in view of the potential conflict between national laws, the UPC rules of procedure and the code of conduct itself, the proposal makes clear in its first article that its scope is limited to the scope required by the rules of procedure. The code of conduct cannot therefore be in contradiction with national laws. On the other hand, in case a conflict arises between the code of conduct and the rules of procedure, the latter will prevail.

The second article lists the principles that must guide the Representatives’s general conduct, who shall:

  • act respectfully, courteously and competently. Representatives’ competency is further defined in the notes as the necessity for representatives to “inform themselves sufficiently about the new system and applicable law to prepare their cases correspondingly”.
  • have due regard for the fair conduct of proceedings, exercise his or her right in good faith, not abuse the Court process, be reasonably accommodating and flexible.
  • not contact a judge about a specific case without the participation or prior consent of the other party’s Representative.
  • serve the interests of their clients in an unbiased manner without regard to his or her personal feelings or interests.
  • ensure the appropriate demeanour of anyone accompanying him or her.
  • not misrepresent cases or facts before the Court (knowingly or where the inaccuracy could easily have been discovered).
  • in case he or she becomes aware that they have misled the court, inform the Court with the consent of their client. If the Representatives’ client refuses to give consent, representatives shall cease to represent that client.
  • not disclose any document that is subject to privilege without the consent of his or her client.

The third article looks specifically at the Representatives’ legal obligations in respect of witnesses and party  experts. The code of conduct states that representatives shall ensure that:

  • witnesses are fully informed about their obligation to tell the truth and of their liability under the applicable national law in the event of any breach of this obligation.
  • experts are fully informed of their obligation to assist the court impartially, being independent and objective and not advocating for any party.
  • the substance of evidence of a witness or expert solely reflect the witness’ or expert’s respective recollection or opinion.
  • reasonable compensation for the work of witnesses and experts is arranged if necessary.

Finally, in case of a change of representation, the former representative shall be responsible of the notification of the change to the Registry without undue delay.

This code of conduct raises however a few questions. For instance,  which national law will be applicable to witnesses? Will it be the witness’ own national law or will it be the national law of the country where it is trialled? One can also wonder whether, independently of which law is applicable, this will create an uneven playing field  in the event of a breach by a witness of her obligations as both options suggest that witnesses would not all be subject to the same national law. Similarly the extent to which a representative will have to “inform” a witness of its liability is uncertain. In fact, does the code of conduct mean that a representative has to advise witnesses on their liability under applicable national laws or does it mean that representatives simply have to alert witnesses? More questions could of course be raised on this code of conduct, for example on the very broad terms used to describe the general conduct of representatives, which may appear particularly vague in comparison with some of the national codes of conduct.

However, as indicated by the Preparatory Committee, further work is expected this month (June 2016) before the draft is tabled again at the meeting of the Committee planned for 30th June…

How is it going to work? A new update on the UPC Case Management System:

Brexit and the German constitutional challenge

On Monday 25/01/2016 was organised in Paris a presentation on the UPC Case Management System with the UPC IT Team. The UPC Case Management System is the platform that will allow the submission of actions and their documents before the UPC, the communication with Judges and Clerks, and the free access by the public to all cases and decisions.

This system is therefore central to the UPC and can already be accessed here. Users are encouraged to leave feedbacks to help shape the system, even if as indicated by the IT Team in its weekly newsletter, no further changes will take place until after March 2016, and all feedbacks “will be logged and put in the backlog for future development which will take place in April 2016“.

Below are the main points developed in this presentation which should clarify the major elements of the UPC Case Management System.

IT and Security:

The Case Management System (CMS) will be available from any device. It will require users to register on the UPC CMS. Registered users will need their email address, their password, and a code sent by text to the user’s phone to log in.

Users will have to register twice: first for the trial version of the UPC CMS (you can do so here) and then to the real version of the UPC Case Management System. (See Registration for more info)

The EU STORK system may be used, although not initially. The aim of the STORK project is “to establish a European eID that will allow citizens to establish new e-relations across borders just be presenting their national eID”. This system would allow users to get connected to the UPC CMS with their national login.

Data is stored in Munich, Germany, by a company which is a Deutch Telecomm subsidiary. Two penetration attempts have been simulated and failed. Twenty attacks have already been recorded.

The IT management will be handed over to the permanent IT Team in Luxembourg in March 2016 .

There will be the possibility to connect law firms’ IT system with the UPC CMS  -to obtain alerts for example. There will also be the possibility to synchronise the Court calendar with firms’ calendars.

The Court’s diary and the case history will be publicly accessible. Once on the UPC CMS, the cases will be freely available to be viewed by the public (see confidentiality section for more info).

Arbitration Centre:

The Arbitration Centre will use the same CMS. The Arbitration Centre CMS will however be independent from the UPC. It won’t therefore be possible for the UPC to access the Arbitration Centre CMS.

Registration:

Internal users: Clerks, Judges, Administrators will be registered by the system administration.

External actors: The parties (claimant and defendant) and third parties (witness and experts) will need to apply for registration before being able to access the system.

At the moment the creation of groups is not possible but it will be allowed soon. All users will need to register individually, then one user will become an Administrator and will be able to create a group of representatives. It won’t be possible to have more than one administrator.

Processes:

The IT Team built the UPC CMS around the Rules of Procedure. Therefore, if the Rules do not provide for a specific provision, the IT Team cannot create it in the IT system. By the end of February/Beginning of March the rules of procedure will be finalised and the IT Team will be able to finalise the UPC CMS.

Cases are included within a process of a pre-determined actions: Infringement, Declaration of non-Infringement, Revocation, Compensation for licences, Action against decision of the EPO.

Each action is organised around a system of logically interconnected sub-processes, for example: submit a statement of claim, raise a preliminary objection.

All actions, undertaken at any stage, of the process are recorded and will be the object of an email to the user, confirming that that specific action has been carried out by the user.

Timers are also available for each task. They will ensure that every action is accomplished within the procedural time limit.

Documents:

Every action is built around documents: forms (which will be pre-filed to save time), pleadings, exhibits, orders, applications.

Documents will be stored on the CMS. It is not possible at the moment to create a draft document and keep working on the system but it is possible to create a draft case, which will only become public and available to the court once it is submitted. It will therefore be possible for an external user to update documents until submission.

If the document is submitted by an external user, it can be rejected or validated by a Court member. If rejected, the external user can submit a request of amendment.

In case of a group of representatives, all members will be able to submit documents.

Confidentiality:

Request for confidentiality can be obtained for confidential documents. It is however not automatic and can be challenged. The documents included in the request for confidentiality will be notified to the judge for an evaluation of the documents’ confidential nature.

If the documents are not deemed confidential they will be available to the public. The submitting party can however withdraw these documents. If they are deemed confidential, the party who submitted them must provide a redacted version, which will be available to the public.

It will be possible to create a confidentiality club, which may include the defendants and/or any chosen third party.

Communication:

CMS will send electronic receipts to confirm that the documents have been received and that an action has been performed for the case. The UPC however still has to provide the details of these emails.

The Participants to the Paris’ workshop asked the IT team to have the possibility to attach to the case the communication with the Judge. The IT Team responded favourably to this request.

Audio (Interim Conference) and Video (Final Hearing) record of court sessions will be available on the CMS.

Opt-out:

A patent can be opted-out by filling a form on the CMS. It requires the patent number. Once the patent number is entered, the information will be extracted from the EPO registers, and will be used for the automatic filling-in of the opt-out form.

The EPO’s information might not be up to date, so it will be important to check the pre-filled form and amend any incorrect information. In fact, if some details are missing or are incorrect the opt-out is ineffective until corrected (Rule 5.6).

Once the information is amended on the UPC CMS, it will become public. The EPO will therefore have an opportunity to amend its register. At the moment, there is however no partnership between the EPO and the UPC. It is therefore uncertain whether the EPO’s registers will be updated.

There will be a different opt-out form for the SPCs.

It is presently only possible to opt-out patents one by one. However the IT Team is looking at an option, which would enable patent owners to opt-out baskets of patents (not more than 30).

Claimants will be able to file a claim even if the patent has been opted-out, to prevent a legitimate action to be stopped by a fraudulent opt-out. In fact when submitting a claim for a patent, which is identified as opted-out by the CMS, its opt-out will be flagged and the CMS will identify the cases in which this patent has appeared. If there is a disagreement as to whether the patent has actually been opted-out (for example the claimant could argue that it has not been opted-out by the patent proprietor but by someone else) it will be to the court to decide whether the patent was opted-out.

The method of payment is not yet scheduled as the fees are not determined yet. If there is a fee it will be payable online.

The Opt-out will be ready by March. No exact date however for the public to start opting-out.

Ownership:

The patent proprietor is the person shown in the relevant register. Rule 8.5 however makes clear that this presumption can be rebutted by the actual proprietor by showing that there are entitled to be recorded as proprietor in each country where the patent has been validated, even if  in fact not registered.

Therefore, if the claimant is not the proprietor, they will be required to submit a declaration of proprietorship following Rule 5.3(e), to prove that they can legitimately pursue the case or the opt-out. This document won’t however be checked by UPC officials.  Thus, if a problem arises the validity of the opt-out will have to be challenged before the court.

Fees:

The fees will be decided in February by the Preparatory Committee. The IT Team will then design a user-friendly fee platform to allow users to pay online. No other form of payment will be possible. The assessment of the fee should be based on “fair royalties” as the Preparatory Committee intends to have simple fee guidelines.

Languages:

Where a Member State nominates a language of proceedings both under Article 49(1) and Article 49(2) UPCA, the claimant may choose the language of proceedings subject to:

-Rule 14.2(b)-the “Belgian exemption” which applies when there is only one local exception;

-Rule 14.2(c)-the judge rapporteur may in the interests of the panel of judges order that the decision may be given in the Article 49(1) language together with a certified translation.

Concerning the CMS, the IT Team is now waiting for it to be finalised to start the translations that will enable claimants to have access to the CMS in English, French or German.

The Protocol to the Agreement on a Unified Patent Court on provisional application

protocol to the agreement on unified patent court on provisional application

What is the “Protocol to the Agreement on a Unified Patent Court on provisional application”?

On 1st October 2015, the member states representatives signed the “Protocol to the Agreement on a Unified Patent Court on provisional application”.

This protocol allows some parts of the UPCA to be applied before the UPC enters into force. It concerns  “article 1-2, 4-5, 6(1), 7, 10-19, 35 (1, 3 and 4), 36-41 and 71(3) of the Agreement on a Unified Patent Court and Article 1-7(1), 7(5), 9-18, 20(1), 22-28, 30, 32 and 33 of the Statute of the Unified Patent Court“. The Protocol will 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 early registration of opt-out demands.

When will it enter into force? 

According to Article 3 the Protocol will only enter into force after 13 states, that have already signed and ratified the UPCA, approve the Protocol. The member states can do so either by signing ratifying or approving it.

On 21st March 2017,  the UK, Sweden, France, Germany, Luxembourg, Denmark, Slovenia, Hungary, Italy and Romania had signed the protocol. Out of these 10 countries only France, Sweden, Denmark, Luxembourg and Italy have ratified the UPCA. This means that 8 further ratifying countries will need to approve the Protocol before it can enter into force.

 

You can view the protocol below:

 

Télécharger (PDF, 362KB)

 

You can view the signing ceremony here

 

 

 

 

 

 

 

 

 

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.

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.

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.

A new Summary and Guide to Evidence

The issue of evidence is key to a successful action before the UPC.

The UPC Blog is therefore publishing a Summary and a Guide to Evidence – Order to preserve evidence and Order for inspection on the question.

The Summary outlining the different steps required to obtain an order to preserve evidence or an order for inspection can be found here.

The Guide to Evidence – Order to preserve evidence and Order for inspection is divided into three posts detailing the Lodging of the Application, Examination of the Application (to be published on Wednesday 28/09), and Grant and Revocation of an order (30/09).

 

 

 

A Summary: The UPC Order to preserve evidence and Order for inspection (Saisie)

The issue of Evidence is discussed in Part 2 of the Rules of procedure and Chapter III and IV of the Unified Patent Court Agreement. Rule 170 details the means of evidence and the means of obtaining evidence.

It lists 4 means of evidence in proceedings before the Court, which are:

  • written evidence, whether printed, hand-written or drawn, in particular documents, written witness statements, plans, drawings, photographs;
  • expert reports and reports on experiments carried out for the purpose of the proceedings;
  • physical objects, in particular devices, products, embodiments, exhibits, models;
  • electronic files and audio/video recordings.

Which can be obtained by:

  • hearing of the parties;
  • requests for information;
  • production of documents;
  • summoning, hearing and questioning of witnesses;
  • appointing, receiving opinions from, summoning and hearing and questioning of experts;
  • ordering inspection of a place or a physical object;
  • conducting comparative tests and experiments;
  • sworn statements in writing (written witness statements);
  • ordering a party or a third party to produce evidence;
  • ordering measures to preserve evidence.

This summary will focus specifically on the order to preserve evidence and order for inspection which are governed by the Rules of Procedure 192 to 199 and Chapter III and IV of the Unified Patent Court Agreement.

  1. Content of the Application:

For all Applications:

The Application must contain: the name of the parties, their address, the details of the patent, information about any prior or pending proceedings relating to the patent, an indication of the division which shall hear the action with an explanation of why that division has competence, the detailed description of the measures requested, the reasons for such request, the facts and evidence relied on in support of the application.

When there is no pending action, the Application must also include a concise description of the proceedings to be started and an indication of the facts and evidence which may be relied on.

For Ex-parte Applications only:

The Application must state the reasons for not hearing the defendant, in particular any delay likely to cause irreparable harm, and any demonstrable risk of evidences being destroyed or otherwise ceasing to be available.

The applicant has the duty to disclose any material fact which might influence the court.

2. Preserving the defendant’s interests:

For all Applications:

Confidentiality:

The disclosure may be limited to certain named persons / or subject to non-disclosure terms.

Security and Compensation:

When granting the order, 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.

Where the measures to preserve evidence are revoked, or where the applicant has failed to start proceedings within the time allowed, or where it is subsequently found that there has been no infringement of the patent, the court may order the applicant, upon request of the defendant, to provide compensation for any injury caused by the measures.

Limited use of evidence:

The evidence obtained may only be used in the proceedings on the merits of the case.

For Ex-parte Applications only:

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

3. Performing the order to preserve evidence:

For all Applications:

The measures shall be performed in accordance with national laws where the measures are performed.

The person performing the measures and presenting a written report shall be a professional or expert with guarantees or expertise, independence and impartiality according to national laws.

The applicant is not allowed to assist to the measures, but may be represented.

For Ex-parte Applications only:

The defendant shall immediately be given notice of the order at the time of the execution of the measures.

The parties affected shall be given notice without delay and at the latest immediately after the execution of the measures.

4. Revocation of the order:

For all Applications:

The defendant may request a review of the order within 30 days from the execution of the measures. The court may confirm, modify or revoke this order.

The applicant must start proceedings on the merits of the case within 20 working days or 31 calendar days, whichever is the longest, from the date specified in the Court’s order. If the applicant fails to do so and upon request of the defendant, the Court shall ensure that the order is revoked or ceases to have effect.

Upon request, a compensation may be provided to the defendant if the measures are revoked or the proceedings on the merits of the case have not been started.