The Rules of Evidence in the UPC: Anglo-Saxon look with continental class

19 February 2016

Bruno Vandermeulen

Although the UPC proposes Anglo-Saxon procedural tools via the Agreement and the Rules of Procedure, the pressure on the parties to conduct "front loaded" and even "pre-loaded" proceedings may push many parties into pursuing steps that bear more resemblance with Continental litigation practice.


The UPC professes to offer a litigation system that combines on the one hand the predominantly written procedure used in civil law/Continental litigation and on the other hand the more "anglo-saxon" approach whereby evidence is adduced during an oral hearing.

Without suggesting any order of preference, Article 53 of the UPC Agreement (the “Agreement”) contains a long list of types of evidence that the parties can rely upon in their dispute before the UPC. It includes hearing the parties, requests for information, the production of documents, hearing witnesses, opinions by experts, inspections, experiments and affidavits.

The Rules of Procedure (the “Rules”), and more in particular its Part 2 (Evidence) elaborate further on these means of obtaining evidence, but do not explain in detail how they should be used in practice. The Rules apparently assume that most practitioners already have specific experience with each of them. Neither the Agreement nor the Rules rank these means of obtaining evidence, as is the case for instance in the Napoleonic Civil Code[1].

A new aspect for most practitioners is that the UPC allows the taking of evidence from any party. So documents can be requested not only from the alleged infringer, but also from the patentee. This opens perspectives that were previously unknown in many European jurisdictions and goes beyond the goals envisaged by the IP Enforcement Directive, which only offered tools to IP owners for combating infringement.

Whereas the available means of obtaining evidence are certainly useful for a patent dispute, it remains to be seen if parties will be offered sufficient time to deploy them, because tight deadlines are imposed to file written arguments and the time for oral hearings will also be limited.

The preamble of the Rules (18th version) states the UPC's ambitious intention: "proceedings shall be conducted in a way which will normally allow the final oral hearing on the issues of infringement and validity at first instance to take place within one year, whilst recognizing that complex actions may require more time and procedural steps and simple actions less time and fewer procedural steps."

The question arises if the UPC can achieve such an ambitious goal with such varied tools for adducing evidence, some of which require quite some extra time and investment by the parties.

The basic principle on evidence is set forth in article 54 of the Agreement, i.e. that the burden of proof of facts shall be on the party relying on those facts. This will not be a surprise. A fact or statement does however not need to be supported by evidence if it is not contested, because in such case it shall be held to be true as between the parties[2]. There are, however, specific circumstances where the burden of proof can be reversed, based on rules of national patent law regarding process claims[3].  

There is no rule prohibiting a party from simply denying the facts alleged against him. He can deny without submitting himself evidence to the contrary. But a party must produce available evidence of a fact if that fact is contested or likely to be contested[4]. And the representatives of the parties are under an obligation not to misrepresent facts knowingly or with good reasons to know[5].

Since the UPC will be a "court common to the Contracting Member States"[6] and not a criminal court, where the burden of proof lies entirely with the prosecuting authorities, both the Agreement and the Rules oblige the parties to co-operate with the Court. The Court can take failures to do so into account, and draw negative inferences from them[7]. The Court also has broad powers to order the production of all evidence in the control of a party[8].

It follows from these rules that the Court and the parties can determine, via the exchange of their written pleadings, which facts are in dispute, where evidence of certain facts is lacking, and who should be ordered to produce the lacking evidence.

The impact of "front loaded" proceedings

The procedure before the UPC is referred to as "front loaded" for a number of good reasons. First of all, because the Preamble of the Rules states that parties "shall set out their full case as early as possible" in the proceedings. Secondly, because Rule 13 ("Contents of the Statement of claim") requires that all relevant facts, evidence, legal arguments and claims for relief must be put forward in the statement of claim. So a claimant must perform serious homework before he lodges his claim with the Registry: he should have all documents and evidence in his possession at the first stage of the proceedings. He has all the reasons to do so, because once his complaint is on record, he will find himself in a procedural rollercoaster and it will be difficult to change course or to adduce new facts.

A procedure before the first instance court of the UPC will exist of three stages: a written procedure, an interim procedure, and an oral hearing. The aim is to finish the written procedure within 6 to 8 months after the initial complaint has been filed. The defendant, who presumably has had no time at all to prepare himself for the dispute, is granted three of those six months for preparing his Statement of Defence (and optionally a counterclaim for revocation). Therefore the reply time for the claimant will be usually limited to two months. All three stages should be completed in around 12 to 15 months. This could make the UPC proceedings move faster than many national courts, and certainly substantially faster than opposition proceedings before the EPO.

This ambition can only be realized, however, if the Court respects its own rules and takes its decisions "as soon as is practically possible". Whilst this expression appears frequently in the Rules, it gives the judges significant flexibility in assessing their own deadlines. It contrasts with the strict deadlines imposed on the parties themselves. It is submitted that the combination of the tight deadlines imposed on the parties and the judge's flexibility for issuing their decisions as soon as is practically possible will discourage parties and their counsel from using multiple tools for adducing evidence. For instance, if the Court needs more than a week to process a parties' application to order the production of evidence when the written procedure has already expired, the deadlines for organizing the oral hearing are unlikely to be met. Since this may cause delay, it will refrain parties from deploying multiple tools for obtaining evidence and will encourage them to focus on the written procedure.

If the UPC does indeed work under the stated deadlines, claimants cannot afford to speculate that they will obtain more evidence in support of their position in the course of the proceedings. This is because the rebuttal time will be too short for finding additional witnesses, to conduct experiments, or to launch other time consuming initiatives. It will already be quite a challenge for any party, whether he is claimant or defendant, to expand on previously filed evidence by asking document for production or hearing of a witness within the short rebuttal time that is available. Furthermore, it will be even more difficult to seek leave from the Court to conduct experiments or an inspection, and carry them out before the oral hearing takes place.

To maximize the efficiency and speed of his action, a patentee has most interest in making sure that his complaint is as complete as possible from the outset. That implies that the complaint should not rely too much on a witness statement or on an opinion, but on documentary evidence and on hard proof.

Such a strategy is even more recommended because witness evidence is in most civil law traditions considered as an unreliable solution, a last resort. The Napoleonic civil code that lies at the heart of the current French and Belgian Civil Codes, for instance, ranks witness evidence below documentary evidence. The civil code even provides that a witness statement can sometimes not override written evidence. Since few UPC judges will be familiar with the mechanics of hearing a witness and appreciating a witness statement in a patent trial, it is likely that the more "Continental" approach will prevail in most UPC Divisions, and that emphasis shall be put on documentary evidence.

The following example may illustrate this. For determining the state of the art in the eyes of a skilled person, judges and counsel with a Continental approach may give greater weight to a publication written by a less known scientist but in tempore non suspecto than to a description of that same state of the art by an eminent Oxford professor acting as an expert witness today. Also, the cost for finding and producing evidence via witness declarations is considerable, and so are the efforts needed for the court and counsel to interpret and digest them.

These could constitute reasons why a party litigating before the UPC would not necessarily rely his case on witness evidence, unless he has nothing better to fall back on. Witness evidence can on the other hand be useful to confirm or supplement already existing documentary evidence, or when there are very fundamental differences of opinion in a given technical field about the interpretation of prior art. But not every patent case gives rise to fundamental scientific discussions.

Certainly when the UPC does not have the same tools to ensure strict ethical conduct of witnesses, and has no power to hold witnesses, parties or their counsel in contempt, it is likely that witness evidence will not become the favorite tool for UPC practitioners to find facts and to invite the Court to apply the law.

So although the rules relating to evidence at the UPC may well, at first glance, have an attractive look and seem to support an anglo-saxon approach, the conduct of proceedings before the UPC may well turn out to be more like the practice before Continental courts for the reasons described above.

The alternative: "pre-loaded" proceedings

What is then the best option solution for a patentee/claimant who has insufficient evidence to start his infringement dispute and who may lack the time to collect it during the course of the proceedings? In this respect, it is important to remind practitioners that the UPC has procedures in place for obtaining evidence from a future party to the proceedings, i.e. from a suspected infringer. A key characteristic of this procedure is that it can be carried out prior to the launch of infringement proceedings, which implies that the procedure could be conducted on an ex parte basis. Apart from its relative quick speed, low cost and efficiency, the "saisie" procedure most importantly enables a patentee to assess his chances as to whether he has real chances to prevail in an infringement case before he decides to embark in full-blown and costly litigation.

This procedure – better known as a "descriptive seizure" – is familiar in many jurisdictions on the Continent. The IP Enforcement Directive 2004/48/EC of 29 April 2004 imposes on EU member states to provide such a remedy via its article 7.1 of the Directive[9].

It is therefore unsurprising that the Agreement also offers such a procedure via an "Order to produce evidence (saisie)" described in Rule 192 et seq. A major difference between this procedure and the currently known "saisie" procedures is that it is not granted automatically on an ex parte basis. Applicants who prefer not to give advance warning to opponents and wish to benefit from the "surprise effect" must therefore specify in their application the reasons why they wish to conduct the procedure on an ex parte basis. In addition, They are obliged to disclose in their application "any material fact that could be relevant to assist the court in making a decision"[10].

If granted systematically on an ex parte basis, as is currently the case under national law in e.g. Belgium, France and Italy, the already "front loaded" proceedings could have an even earlier start and turn into "pre-loaded" proceedings.

Time will tell whether the UPC will allow a patentee to justify the ex parte route for his application solely on the basis that he first wishes to be sure that there is sufficient evidence of infringement available before he starts a case. This is the main reason why "saisie" proceedings are so popular on the Continent. Rule 198 seems to offer the legal ground for that argument, since it provides that the "saisie" order is revoked, or shall cease to have effect, if no proceedings are started within a certain period after the date of that order.

Another question that arises is whether the Court will allow the patentee to argue that he might lack time to collect the requested evidence during the short timeframe of inter partes proceedings, and therefore needs to obtain the evidence in advance.

If the UPC were to adopt a strict approach by not systematically allowing a patentee to deploy the aforementioned "pre-loaded" proceedings, practitioners should not forget that they may be able to rely on the already existing national "saisie" proceedings and commence thereafter a litigation before the UPC. Since the UPC is a "court common to the member states", the thus collected evidence can be adduced before the UPC, provided that the UPC proceedings are launched in a timely manner and according to the national law where the "saisie" was applied for and enforced[11].

The outcome of these issues will be highly relevant for the shape and the cost of proceedings before the UPC, determining whether they will display a more Continental or more Anglo-Saxon character. And last but not least, it will influence the conduct of the parties.

First published in CIPA, February 2016.

[1] See e.g. articles 1317 to 1369 of the Belgian Civil Code that organize such a ranking.

[2] RoP 171.2°

[3] Article 55 UPCA : "If the subject-matter of a patent is a process for obtaining a new product, the identical product when produced without the consent of the patent proprietor shall, in the absence of proof to the contrary, be deemed to have been obtained by the patented process."

[4] RoP 172.1°

[5] Article 48.6° UPCA.

[6] Article 1.2° UPCA

[7] This is e.g. expressed in Rule 190.7° : "If a party fails to comply with an order to produce evidence, the Court shall take such failure into account when deciding on the issue in question".

[8] RoP 172.2°

[9] "Member States shall ensure that, even before the commencement of proceedings on the merits of the case, the competent judicial authorities may, on application by a party who has presented reasonably available evidence to support his/her claims that his/her intellectual property right has been infringed or is about to be infringed, order prompt and effective provisional measures to preserve relevant evidence in respect of the alleged infringement, subject to the protection of confidential information. Such measures may include the detailed description, with or without the taking of samples, or the physical seizure of the infringing goods, and, in appropriate cases, the materials and implements used in the production and/or distribution of these goods and the documents relating thereto. Those measures shall be taken, if necessary without the other party having been heard, in particular where any delay is likely to cause irreparable harm to the right holder or where there is a demonstrable risk of evidence being destroyed.

Where measures to preserve evidence are adopted without the other party having been heard, the parties affected shall be given notice, without delay after the execution of the measures at the latest. A review, including a right to be heard, shall take place upon request of the parties affected with a view to deciding, within a reasonable period after the notification of the measures, whether the measures shall be modified, revoked or confirmed."

[10] This is consistent with practices in countries where such measures are granted systematically on an ex parte basis. E.g. in France, the applicant has a special duty of loyalty regarding the background of the case. It shall disclose to the Presiding Judge all relevant facts even though they do not support its claim. Otherwise, if an important fact has not been disclosed, the order could be revoked and the all seizure may be considered as void.

[11] This is possible for all national “saisie” proceedings that are available as provisional measures for taking evidence in the meaning of article 35 of Regulation no. 1215/2012 of 12 December 2012 on the jurisdiction and the enforcement of judgments in civil and commercial matters, amended by Regulation 542/2014 of 15 May 2014 (the "Brussels Regulation (recast)").