Category: UPC Procedure and Mock Trials

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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.
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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).

 

 

 

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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.

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The Paris Opt-out mock trial: Valid or not valid that is the question…

UPC Judges recruitment 2019

A mock trial addressing the issue of the validity of an opt-out took place in Paris on 06th June 2016. It was organised by the Union pour la Juridiction Unifiée des Brevets (UJUB) and hosted by the MEDEF.

The trial opposed two companies, Haussmann La Riche and Generoso, over the revocation action of one of Haussmann La Riche’s patent. The action had been initiated by Generoso before the UPC central division. Haussmann La Riche however challenged the competence of the UPC, since it considered that it had correctly taken the necessary steps to “opt out from the exclusive competence of the Court”. Generoso on the other hand  argued that the UPC was competent because the opt-out had been incorrectly. In fact, the opt-out had been made in the name of a corporate entity which  no longer legally existed and did not name the patent co-owner. In the alternative, Generoso argued that Haussmann La Riche’s secretary had no capacity to register the opt-out, as only the head of the patent department and European patent attorney had the authorization to do so on behalf of the proprietors.

According to the UPC Rules of Procedure, the question whether the UPC has jurisdiction must be presented as a Preliminary objection (Rule 19 of the Rules of Procedure, to which Rule 48 in fine refers) within one month of the lodging of the Statement of claim. This question then falls within the competence of the judge-rapporteur (Rule 20), who for this matter is the presiding judge, except if the judge-rapporteur decided to refer the matter to the panel under Rule 102.

Both parties, represented by British, French, Dutch lawyers and patent attorneys presented their arguments to Marie Courboulay (Vice-president of the 3rd Chamber of the Tribunal de Grande Instance of Paris), the French judge-rapporteur who delivered her ruling on the issue of the validity of the opt-out at the end of the trial. She held, in line with the audience’s vote (though it was held in her absence), that the opt-out was indeed invalid and that the UPC was competent.

[embeddoc url=”http://www.opinews.com/ujub/docs/2016-06-06_UJUB_Opt-out_mock_trial_binder.pdf”]

The hearing can be also viewed here while the detailed synopsis of the case and the parties’ documents can be viewed here.

We await of course for your comments and views on the validity of this opt-out. Valid or not valid that is the question…

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UPC Mock Trial 2: 3 Abrasive v La Toilemeri

UPC Judges recruitment 2019

 On Friday 2nd April 2015 as announced on the UPC Blog, the « Union pour la Juridiction Unifiée des Brevets » organised a second mock trial replicating the Unified Patent Court. (Find here our post on the first UPC mock trial organised by the UJUB). It was with great pleasure that the UPC Blog editorial team attended this mock, which once more offered a remarkable insight into the functioning of the UPC and gave substance to its rules of procedure and to the UPCA.

The afternoon was divided into three sessions:

  • Hearing on request to preserve evidence and inspection of the premises
  • Hearing on the application for provisional measures
  • Court delivered its judgment

I. The Facts:

This second mock trial opposed a US company “3 Abrasive” (the Claimant) and a French company “La Toilemeri” (the Defendant) over an infringement action of a European patent for “flexible abrasive”.

The patented invention was described in details as “a method for manufacturing an abrasive member comprising a flexible sheet with a multitude of discrete metal protuberance wherein a multitude of copper protuberance are formed on the flexible sheet, nickel protuberances are electrodeposited over the copper protuberances in the presence of particulate abrasive material so that the particulate abrasive material becomes embedded in the nickel deposits and wherein the voids between the protuberances are at least partially filled with resin material, the resin material being selected so as to reduce lateral movement of the nickel deposits.”

This patent is “valid and in force in the Contracting States designated by the Patent, including France, Germany, The Netherlands, United Kingdom and Sweden. All the Designated Contracting States of the Patent have ratified and implemented the UPC Agreement.”

The patent was also the subject of an opposition proceeding in the European Patent Office. In a decision dated 3 September 2014, the opposition division however had rejected the opposition and decided that the patent be maintained as granted. At the time of the mock trial, an appeal was pending before a Board of Appeal.

3 Abrasive alleged that La Toilemeri, the Defendant advertised a product on its website whose characteristics could only be obtained with the method developed in 3 Abrasive’s patent. La Toilemeri, in fact marketed a product described as “an excellent lateral bearing of the abrasive patches, a reinforced securing of the abrasive patches onto the support.”

Following this discovery, 3 Abrasive decided to engage an infringement action before the UPC local division in Paris since no application for opt-out had been made and La Toilemeri is domiciled in France. The Statement of claim was filed on 13 October 2014 in English, which under Art 49(2) UPCA, is one of the official languages of the EPO that the Paris local division accepts.

La Toilemeri filed a defence on 18 December 2014 “challenging any evidence of infringement” and a counter claim for revocation of the Patent. Simultaneously, the Defendant filed an Intervention in the Appeal procedure, which had been initiated at the EPO on 21 November 2014 by a third party. The Defendant, also requested the Court that, under the provisions of Rule 298, the appeal procedure at the EPO be accelerated and to stay its proceedings pending the outcome of the EPO appeal.

The local division in Paris:

The Panel of the local division in Paris comprised three judges: Mr Paul Maier (FR), President, Mrs Sophie Canas (FR) and Mr Colin Birss (UK), who was also appointed in October 2014 as the Judge Rapporteur (following Rule 18).

According to Article 33 (3)(a) UPCA the Court then decided to keep the applications for infringement and revocation together and Mr Kim Finnilä (FI) was subsequently allocated to the panel as technically qualified judge.

 

II. Application for preserving evidence and inspection (The application can be seen here p 89 of the binder):

 

Following La Toilemeri’s statement of defence, in which it insisted that 3 Abrasive did not have any evidence of the alleged reproduction of 3 Abrasive’s method of manufacturing, 3 Abrasive decided to file on 29 December 2014 an application for preserving evidence (Rule 192) with a request of an order for inspection at the premises of La Toilemeri, near Paris.

3 Abrasive also requested the Court to issue this order without hearing the Defendant so as to avoid any risk of the evidence disappearing.

The inspection was granted (the decision of the court can be seen here at page 99 of the binder) and revealed that:

  • The fabrication process of nickel mixed with diamond powder was effectively electro deposited through a layer of non-woven fabric, which thus matched 3 Abrasive’s patent. This was confirmed by a test report.
  • A distribution agreement for the product in Europe with commercial indications.

III. Application for provisional measures (The application can be seen here at page 119 of the binder):

After 3 Abrasive spotted that La Toilemeri had announced on its website that it would launch its product at an international exhibition in Paris in May 2015, it applied under rule 206 for provisional measures. La Toilemeri filed observations against this application (which can be seen here at page 142 of the binder).

IV. Judgment of the Court:

While the Court was deliberating the participants were asked to vote, and by a large majority decided that 3 Abrasive should not be granted the provisional measures it was requesting against La Toilemeri. The Court however decided to grant 3 Abrasive the injunction it was requesting.

The slides explaining the technical elements of the case and the relevant UPC articles and rules can be found here.

The UJUB has dedicated a website to this second mock trial on which notably the video of the whole trial can viewed. This will give a great insight into the functioning of the UPC for those who could not attend or stream the trial. You will also find the whole synopsis and the presentation of the different “actors”.

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New Mock Trial UPC April 2nd 2015 Paris!

The UPC Blog would like to share this invitation to the second UPC Mock Trial organised by the UJUB (Union pour la Juridiction Unifiée des Brevets). We had attended the UJUB first mock trial – see our post here– which was a real success and highlighted the incredible challenge that the UPC represents. The UPC Blog will thus be delighted to be present to this new Mock Trial which should particularly address the means of evidence and the provisional measures. 
Mock Trial UPC April 2nd 2015 Paris – SAVE THE DATE
 
 
The date of entry into force of the European Unified Patent Court is 
not yet known. However after the Trier Oral Hearing on the 17th draft
of Rules of Practice we can test the proceedings so to be well prepared
at this date.
 
The Mock Trial that has been held last May by UJUB (the association of
most patent professionals in France) has been a great success.
 
UJUB is managing of a second one that will take place in Paris on
April the 2nd. 
This mock trial should particularly address the means of evidence and
the provisional measures.
 
We will provide you soon with further details.
 
Please save this date : Paris, April 2nd 1pm-6pm
 
 
Alain MICHELET
Union pour la Juridiction Unifiée des Brevets –  UJUB
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Want to lodge a statement of claim with the UPC? Try its case management system prototype…

The UPC has revealed the prototype of its case management system. It is based on the UPC draft rules of Procedure 13-28, allowing testers to file an infringement claim. Feedback from testers will be used over October and November 2014 to help the UPC to continue configuration of its case management system and evaluate its procurement process.

The purpose of the prototype is to test the viability of a cloud-based, configured system for the UPC, where data is stored by a supplier and can be accessed securely from any location.

This trial comes after workshops organized by the UPC with patent lawyers throughout Europe which highlighted three recurrent issues:

“Roles-Based Access – There are strict legal requirements for protecting access to certain patent information and Lawyers want to be able to control access.
Usability – Several Lawyers demonstrated current eFiling systems across Europe and highlighted usability issues; we want to use what is good from other systems and we don’t want to make the same mistakes.
Ease Document Management – Identifying documents and searching content were key to users’ working patterns; being able to quickly identify the type of document and current status.” (http://prototype.unified-patent-court.org/selfservice/web/index.html)

The prototype e-Filing/case management can be accessed here.

By registering to the website you will be able to lodge a fictitious statement of claim divided into the following twenty-four sections:

  1. Claimant Representative
  2. Claimant details
  3. Claimant Contact Details
  4. Individual Claimant Address Details
  5. Company Claimant Registered Office Details
  6. Company Claimant Contact Address Details
  7. Please enter your Patent Number
  8. Is the Claimant the proprietor of the Patent
  9. Are there any additional proprietors?
  10. Patent Proprietor
  11. Does your claim involve more than one patent?
  12. Does the claimant have the proprietors permission to submit this claim
  13. Please upload a document detailing permission(s) to proceed with this claim
  14. Add further Patents
  15. Pending proceedings
  16. Details of Claim
  17. Defendant
  18. Defendant Contact Details
  19. Individual Defendant Address Details
  20. Company Defendant Registered Address Details
  21. Do you know who is representing the Defendant?
  22. Case hearing
  23. Submit
  24. Payment

The prototype offers of course the opportunity to give feedback by clicking on the “Send Feedback” tab at the bottom of your statement of claim screen.

The UPC is planning a full, open procurement process, with publication of the procurement notice in the Official Journal of the European Union in November 2014 and contract award in summer 2015.

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UPC First Mock Trial

 

Update: A second Mock Trial is organised by the UJUB in Paris on April 2nd 2015! See our post on this new mock here. 

 

On May 22nd, a mock trial before the Unified Patent Court at the Central Division in Paris was organised by the Union pour la Juridiction Unifiée du Brevet, the MEDEF, and the Institut National de la Propriété Intellectuelle[1].

 

This mock was opposing two fictitious companies in patent infringement proceedings. The document bundles with the background information, the preliminary objections and the main pleadings of the case can be found here.

 

The trial was chaired by Mr Alain Girardet from the French Court de Cassation, the Judge rapporteur, Dr Klaus Grabinski from the German Bundesgerichtshof, and Mr Walter Holzer, former president of the EPI who held the role of Technical judge.

 

After a quick presentation of the background information by the Registrar, Me Dominique Ménard, the mock trial opened with questions and answers with the Judge rapporteur on the issues highlighted during the interim phase. A video recording of the interim conference was also showed to the audience.  This was followed by the oral submissions of the claimant and defendant. The claimant was represented by Mr Michael Burdon from the United Kingdom, and the defendant by Me Pierre Véron and Me Amandine Métier from France. Finally while the panel was discussing its decision the audience was asked to vote on the outcome of the case.

 

The professionalism of all participants and the resources deployed gave a very realistic feel to this mock trial, which was saluted by the audience. This mock was the first opportunity for all the lawyers present to visualise the different parameters at stake with the UPC. Hence it appeared very clearly to the audience that new technologies and technical resources will be key for the UPC such as with interim video conferences and their coordination between parties across Europe. Similarly this mock trial highlighted very realistically the major differences between national jurisdictions and the UPC, the most obvious ones being of course the language of proceedings and the need to master new and extended rules of procedure.

 

Thanks to the hard work and the talent of its organisers, this mock trial was a real success both in terms of anticipating the legal challenges and benefits for lawyers attached to the UPC and reminding its audience of the central place that the UPC will take when it will come into effect.

The UPC Blog would like to invite its readers to view the mock together with the document bundle of the case here.

 

 


[1] Also sponsored by the AACEIPI, AAPI, ACPI, AFEP, AIPPI, AFPPI, APEB, ASPI, LES.