Order to preserve evidence Archives - UPC Blog by amar goussu staub

30 September 2016

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.

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.

28 September 2016

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 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.

• 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.

23 September 2016

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.

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.

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.

23 September 2016

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).