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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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Ratification by the Netherlands confirmed

Encouraging steps by participating member states towards the entry into force of the UPC Agreement

The Netherlands have deposited on 14/09/16 their instrument of ratification to the general Secretariat of the Council, thereby becoming the 11th country to have ratified the UPCA.

For the Unified Patent Court Agreement to come into effect 13 countries including France, Germany and the United Kingdom must deposit their instruments of ratification. The UK’s ratification however has become very uncertain after Brexit and Germany’s ratification has allegedly been put on hold until the UK’s participation to the UPC and UP is decided.

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More on Brexit from the AIPPI 2016:

Brexit and the German constitutional challenge

For want of anything better (ie, real concrete news about what the UK will do regarding the UPC), more discussions as to whether the UK should or will be a member of the UPC have taken place at the AIPPI 2016 congress this week.

The World Intellectual Property Review reports that Margot Fröhlinger, principal director of patent law and multilateral affairs at the EPO, reiterated the EPO’s commitment to the UPC and its desire to see the UK participate even after Brexit.

She highlighted that the “project is ready to be implemented” and, that considering the investment that has already been made as well as the momentum the UP and UPC project created, the UPC “will not been brought to a halt”.

It also appears that the EPO would prefer the UK to be a member of the UPC and unitary patent so that neither of them lose attractiveness. The UK was in fact in 2015 the third country of origin of patent filings and has highly regarded judges from who the UPC could benefit.

Finally, Margot Fröhlinger clarified the issue of the UK’s participation to the UPC after Brexit, and said it would be legally possible for the UK to join the UPC as long as it signed safeguards to ensure the supremacy of EU law. She pointed out that if the UK were to ratify before leaving the EU, it could count on the goodwill of other EU member states.

This obviously raised the question as to what will happen if the UK does not ratify the UPC Agreement.  Margot Fröhlinger appeared  to think that the UPC members will have to “find a way to go ahead without the UK”. This would require a re-ratification but could probably be expedited through a simplified procedure in most contracting member states.

Clemens Heusch, Nokia’s head of European litigation, on the other hand shared his skepticism as to the UK’s ratification of the UPC Agreement, and highlighted the legal uncertainty surrounding the UK’s participation to the UPC after it leaves the EU, despite the EPO’s reassurance on this question.

Lastly, yesterday’s session also heard from Thierry Sueur, vice-president of IP at Air Liquide, a French industrial gases and services provider who underscored that the UPC and the unitary patent are, despite Brexit, still considered by industries as central for innovation and economic growth…

 

 

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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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UK IPO’s update on Brexit:

Brexit and the German constitutional challenge

The UK’s Intellectual Property Office (IPO), the official government body responsible for intellectual property  rights, published a note entitled “IP and Brexit: The Facts” which intends to clarify  “the future of (UK) intellectual property laws following the recent Referendum decision“.

It succinctly highlights the different international IP agreements that UK right holders and businesses can make use of for trademarks, copyrights, patents, designs and enforcement. It also invites IP users to share their views on how to address some of the issues created by the Brexit such as the right of UK IP professionals to represent clients before the EU Intellectual Property Office, or the protection of designs in the UK.

Regarding patents, the IPO is keen to emphasise that “British exit from the EU will not affect the current European patent system as governed by the European Patent Convention” and that “the referendum result has no impact on UK businesses’ ability to apply to the European Patent Office for patent protection“. By contrast, the question of the UPC is addressed only very briefly in a paragraph which  stresses the UK’s continuing participation in the UPC in its capacity as Contracting Member State. However, although it specifically mentions that the UK will continue “to attend and participate in UPC meetings ” the IPO gives no indication as to the possible scenarios  which could allow the UK to take part in the UPC once it leaves the EU…

 

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The future of the Unitary Patent package as seen by the EPO:

Brexit and the German constitutional challenge

Benoît Batistelli, the EPO’s president published this week a communiqué on the future of the Unitary Patent package following a conference hosted by the EPO in Munich.

It appears that the participants were eager to find ways for the Unitary Patent package to go ahead and enter into operation as soon as possible. Benoit Batistelli highlighted in his communiqué that “at a time of economic challenges and significant budgetary constraints for companies, businesses should not be denied the economic advantages and cost savings offered by the Unitary Patent package”.

Another trend common to the event organised in Paris by the UJUB and the conference organised in Munich by the EPO was the  hope that “political leaders will listen to the pleas of the user community to go ahead with the Unitary Patent package”, especially as the UPC will be ready to begin operating once the necessary ratifications of the UPC Agreement are obtained.

Panel discussions among business representatives also  confirmed that “users are by and large happy with the envisaged implementation, including renewal fees, the Rules of Procedure of the Unified Patent Court, and other decisions of the UPC Preparatory Committee”, while a panel discussion among renowned patent judges showed that “future UPC judges will be well prepared for the challenges and that proceedings can be expected to be handled in the most efficient way”. It appears therefore that the expectations in Paris and in Munich for the UPC were very high and that users are eager to see the UPC in action.

Different scenarios for the best way to proceed with the Unitary Patent package were therefore addressed . According to the EPO,  the best case scenario would see the UK going ahead as soon as possible with the ratification of the UPC Agreement. This would allow the UK afterwards, in its EU exit negotiations, to obtain its continuous participation both in the Unified Patent Court and the Unitary Patent.  In fact, as discussed in Paris, “with the UK having brought the system into operation by ratification and having participated in the system from the beginning, it is possible that Member States may allow the continued participation of the UK , even after the ‘Brexit’ takes effect”. The EPO’s president noted however in his communiqué that, even if the UK were not to take part in the Unitary Patent package, there seems to be “a clear feeling in the international user community that the system would remain sufficiently attractive for many”.

Finally, the EPO expressed in its communiqué its support for the UPC, and “stands ready not only to register the first Unitary Patents, but also to assist as much as possible in finding appropriate solutions in the interest of our user community and our Contracting States.”

With Theresa May becoming the new UK Prime Minister today in the UK, one can hope that the UPC will be on her agenda in the coming months.

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

Encouraging steps by participating member states towards the entry into force of the UPC Agreement

On Wednesday (06/07/16) the Union pour la Juridiction Unifiée des Brevets (Union for the Unified Patent Jurisdiction) organised in Paris a conference on the consequences of the Brexit for the UPC. (See the recorded video below)  The participants,  Thierry Sueur, chairman of the IP Committee of the MEDEF -the French business federation- representing the European industry, Professor Winfried Tilmann from Hogan Lovells, Rowan Freeland from Simmons&Simmons, and Alexander Ramsay, chairman of the UPC Preparatory Committee, outlined  the legal and political consequences of the Brexit on the UPC and the immediate next steps for the Preparatory and Advisory Committee in this regard.

After an opening by Pierre Véron who reflected on the shock of the Brexit news (shared by the audience), Thierry Sueur highlighted the position of the European Industry which is demanding that the ratification process continues in order for the UPC to come live, and he thus pleaded for the UK to ratify the UPCA and its protocol. According to him, ratification by the UK would in fact allow the UPC to meet its opening deadline in Spring 2017 and would leave the door open for the UK to take part in the UPC and the Unitary Patent package.

Professor Winfried Tilmann then addressed the question of whether the UK can still take part in the UPC. First Professor Tilmann argued that there were strong political arguments to justify the UK’s ratification. In fact, the UK is still and until the end of the two-year period after its notification of withdrawal under article 50 of the Lisbon Treaty, a member of the EU and, as both houses of British parliament have already started working on ratifying the UPCA, the ratification could therefore be quite straightforward.  He also noted that the UPCA is an international treaty that does not derive from EU law, and that although the UPC shall be a court common to the Contracting Member States -and thus subject to the same obligations under Union law as any national court of the Contracting Member States- it is not a court of the EU -contrary to the ECJ. This would thus mean that the UK local and central divisions could remain in London, and that UK practitioners and judges could take part in the UPC.

Regarding the legal factors involved in considering whether the UK could leave the EU but still be a contracting member state under the UPCA, article 84 of the UPCA appears to be an obstacle. In fact it provides that only EU member states may ratify the UPCA. According to Professor Tilmann, this condition implies, that countries which ratify the UPCA remain EU member states. Therefore if the UK leaves the EU pursuant to article 62, 65, and 67 of the Vienna Convention on the Law of Treaties, both the UK and the other signatories of the UPCA, would have the right to cancel the contractual relationship between the UK and themselves.  Article 84 would thus need to be amended to allow the UK to be a signatory to the UPCA even after leaving the EU. Such a change is possible for Contracting Member States on the basis of article 149a(1)(a) of the European Patent Convention and would not require them to re-ratify an amended UPCA. The amendments to the UPCA could in fact be included in the Brexit agreement which would in turn  have the quality of Union law and “pursuant to article 87(2) UPCA, the Administrative Committee has the power to change the UPCA in order to bring it in line with Union law”.

However it is important to note that, were the UK to leave the EU after ratifying the amended UPCA,  it would be bound by the ECJ’s decisions and by its interpretation of EU law as the UPC has the obligation to refer questions on EU law to the ECJ. The UK would also be jointly and severally liable for damages with other contracting member states as provided by the UPCA. Finally, during the transitional period, national UK courts would also be bound by the UPCA within the same remit as stated above.

The legal consequences of the UK leaving the EU would nonetheless be wider than those faced for the UK’s participation to the UPC. In fact the unitary effect would also need to be extended to the UK by agreement under article 142 (1) EPC. This would result into a Unitary patent deriving its effects from EU law when applying within the territory of the EU, and a Unitary patent deriving its effects from international law when applying to the UK.

Rowan Freeland then explored what would happen were the Contracting Member States to “exclude the UK of the UPCA” before it leaving the EU, in order to pursue the implementation of the UPC and Unitary Patent. According to him, re-negotiations of the UPCA to exclude the UK would be possible, but would require a new ratification of the newly amended UPCA. This would in turn require Denmark to organise a new referendum for the ratification of the new UPCA. Rowan Freeland however highlighted that 50% of all European Patents are validated in the UK, France and Germany. Therefore if the UK were not to take part in the UPC and the Unitary patent, a smaller number of users than expected might potentially be interested in the UPC and the Unitary patent. This reasoning would extend to the unitary patent “top 4” renewal fees which is based on the cost of renewal in the four EU countries that have registered the most patents. Indeed, if the Unitary patent effect is not extended to the UK, and if the latter is not part of the UPC the savings achieved by opting for the Unitary patent would decrease.

Finally, despite the general uncertainty, Alexander Ramsay tried to be reassuring and explained that for the moment the Preparatory Committee was working as normal and that the recruitment process was still ongoing. As the chairman of the Preparatory Committee, he emphasized that member states are encouraged to actively pursue their efforts for ratification in order not to delay the coming live of the court, whenever that may be. Alexander Ramsay explained that no contingency plan had yet been drafted as the political situation is very unclear. The Preparatory Committee will therefore need to have more elements of information on the position of the UK and on how the other contracting member states wish to proceed, before devising new options for the UPC and Unitary patent. Alexander Ramsay however was positive and seemed to believe that the project of the UPC and Unitary patent will survive Brexit and come live anyway.

Although the atmosphere cannot be described as joyful, the participants (including the UPC Blog) expressed their hopes to see the UPC and the Unitary Patent becoming a reality in the near future and for EU countries to seize this opportunity to bring the union closer through IP.

Below the recorded video of the conference available on YouTube:

https://www.youtube.com/watch?v=p5clCZXqgxk

The documents (presentation slides) of the conference can be found here.

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17th meeting of the Preparatory Committee in Stockholm

Brexit and the German constitutional challenge

The Preparatory Committee held its 17th meeting in Stockholm on 30th June, where it visited the premises of the Regional Division of the UPC located within the District Court of Stockholm. 

The communiqué published by the Preparatory Committee mentions that the “Committee endorsed a number of papers, namely a set of rules on financial management during the period of provisional application, how to structure the corporate functions, and regulations relating to judges and staff. Some minor technical work is to be completed on these items during the summer but the Committee is not expected to have to come back to them in meeting”.

It also appears that the Committee agreed on a set of consequential amendments to the Rules of Procedure  to include provisions on  court fees and the Code of Conduct which had been previously agreed by the Committee.

Finally, the Committee endorsed the UPC’s draft budget, but made clear that the budget will be a “live document subject to changes before finally adopted by the Administrative Committee”.

The Committee will meet next in early October 2016.