24 November 2022

What Will Litigation In Front Of The Unified Patent Court Look Like?

Gowling WLG


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If everything goes to plan, the Unified Patent Court (UPC) will open its doors in early 2023. As readers will likely be aware, its operation will be governed by a series of procedural rules...
UK Intellectual Property
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If everything goes to plan, the Unified Patent Court (UPC) will open its doors in early 2023. As readers will likely be aware, its operation will be governed by a series of procedural rules (the Rules of Procedure of the Unified Patent Court (the "Rules")).

We have summarised below the key procedures and tools available in the UPC. We have also compiled a comparison with the rules and procedures in Germany, France and the UK. Download the full comparison to find out more.

What are the stages of proceedings before the UPC?

Proceedings before the UPC will generally be divided into five stages:

  1. a written procedure involving exchange of written pleadings;
  2. an interim procedure (possibly including an interim conference) to help clarify issues in dispute and to prepare the case for the oral procedure;
  3. an oral procedure including an oral hearing of the parties (unless dispensed with), followed by a decision on the merits;
  4. a procedure for the award of damages; and
  5. a procedure for cost decisions.

It is expected that the proceedings will be relatively front-loaded with the written pleadings delving into the detail of the relevant facts and issues.

The procedure also allows for the production and exchange of expert reports, witness statements and experiments. It is likely that relevant applications will need to be made to adduce such evidence before the interim conference and the Court will then make appropriate orders in response to these applications.

Depending on the matters in issue and whether the proceedings have been bifurcated (find out more in our previous article on the UPC) the procedure above may deal with infringement and validity issues together.

It is expected that the Court will play an active role in encouraging settlement at various points in the above stages (as evidenced by the establishment of the UPC Patent Mediation and Arbitration Centre, and the requirement of the judge-rapporteur to explore the option of settlement at the interim conference). It remains to be seen however whether the parties will prefer a judicial clarification of the dispute as is often the case in national proceedings.

What forms of evidence are available?

The scope of the means of evidence in the UPC is broad and will include:

  1. written evidence, in particular documents, written witness statements, plans, drawings, photographs;
  2. expert reports and reports on experiments;
  3. physical objects, in particular devices, products, embodiments, exhibits, models; and
  4. electronic files and audio/video recordings.

Additionally, the following procedures will be available to parties seeking to obtain further evidence:

  1. hearing the parties;
  2. requests for information;
  3. production of documents;
  4. summoning, hearing and questioning of witnesses;
  5. appointing, receiving opinions from, summoning and hearing and questioning of experts;
  6. ordering inspection of a place or physical object;
  7. conducting comparative tests and experiments; and
  8. sworn statements in writing (affidavits).

An important rule is that a party making a statement of fact, which is contested or likely to be contested, for example allegations of infringing acts, must indicate means of the evidence to prove it. Therefore, it will be important for parties to consider early in proceedings exactly how they will demonstrate the facts on which they rely.

The broad scope of the available means of evidence seemingly provides plenty of opportunities for the parties to develop their case (and the evidence supporting the case) in the way they wish, subject to the potential time and cost of doing so. We may see divergences in approach from parties and legal representatives of different nationalities (who will naturally be most familiar with the means of evidence and procedures for obtaining evidence available in their own jurisdictions).

Will the UPC order disclosure of documents?

It is not expected that there will be a formal process of disclosure in proceedings. However, Rule 190 reads as follows:

"Where a party has presented reasonably available and plausible evidence in support of its claims and has, in substantiating those claims, specified evidence which lies in the control of the other party or a third party, the Court may on a reasoned request by the party specifying such evidence, order that other party or third party to produce such evidence."

Therefore "disclosure" of documents will only be ordered where a party has specified evidence which is in the control of another party. For the party seeking such disclosure this appears to be a high threshold to meet in circumstances where it may not be known what documents exist and are in the control of the other party.

The application of the rules may differ depending on the nationality of the local division, seat of the central division, and/or the judges.

Are saisie and similar proceedings available at the UPC?

The Court can order measures to preserve relevant evidence, including physical seizure of infringing products or inspection of premises.

An application should be made in the division where the applicant has commenced an infringement action or, if proceedings have not yet been commenced, where they intend to start proceedings.

The applicant can request the measures to preserve evidence without hearing the defendant in circumstances where any delay is likely to cause irreparable harm to the applicant or where there is a demonstrable risk of evidence being destroyed or otherwise ceasing to be available.

Given the detailed nature of the rules regarding evidence preservation, this may be a procedure, which is expected to be used in more circumstances than currently seen in the UK.

Will trade secrets and other sensitive information remain confidential?

The UPC Agreement provides that the confidentiality of trade secrets, personal data or confidential information "may" be maintained. The Court can restrict the collection or use of such information, or restrict access to certain individuals. These are however not automatic rights and it appears the Court will have some discretion as to whether, and in what circumstances, to maintain confidentiality.

The Rules specifically provide for the possible protection of confidential information in the following circumstances:

  • order to produce evidence from a party / third party (the evidence itself can be kept confidential);
  • application to preserve evidence (details of the application itself may be kept confidential in circumstances where the applicant withdraws the application on the defendant being made aware of it);
  • application to preserve evidence (preserved evidence itself can be kept confidential)
  • order for inspection of products or premises etc. (any confidential "information", for example in a particular product, can be kept confidential); and/or
  • application for provisional measures, for example, a preliminary injunction or seizure of goods (if an applicant fails to achieve the order and the defendant has not been heard, the Court may maintain the confidentiality of the application itself).

It remains to be seen how the Court will handle the protection of confidential information in documents not falling within the above categories, for example expert evidence dealing with infringement and validity issues (in such a case, a party seeking to preserve the confidentiality of documents may request the Court to do so, and provide specific reasons for such confidentiality).

Are preliminary injunctions available?

Yes, the Court may order interim relief to prevent continuation of an infringement or an imminent infringement. In doing so the Court shall have the discretion to take into account the potential harm of the granting or refusal of the relief. The Court can grant interim relief on an ex parte or inter partes basis, the former in circumstances where any delay is likely to cause irreparable harm to the applicant or where there is a demonstrable risk of evidence being destroyed.

The procedure will involve a written procedure (whereby the applicant sets out, for example, the relief requested and the reasons why the relief is necessary) and, at the Court's discretion, a subsequent oral procedure where the parties, or just the applicant, is heard.

The Rules allow the Court to decide on the application for interim relief "immediately" on receiving the application (and without an oral hearing) in cases of extreme urgency. In such circumstances the application might be heard by a single judge rather than the usual panel.

What remedies are available?

Remedies available include:

  • An injunction;
  • Damages (including information and rendering of accounts from the infringing party in order to assist in the determination of the amount of damages); and
  • Destruction or recall of infringing articles

What is the expected length of trial?

The presiding judge is expected to complete the oral hearing within one day, although given the potential for multiple experts and witnesses to be heard on potentially complex issues, we consider that some cases may inevitably take longer than one day.

What is the timeframe of proceedings?

The Court aims to have the final oral hearing take place within a year of proceedings having been commenced, and the decision on the merits should be expected within six weeks of the oral hearing. Decisions on damages and costs can take place at, or "as soon as practicable" after, a decision on the merits.

The Court may stay a damages determination pending an appeal. No timeframe for hearing of an appeal is provided in the Rules or the UPC Agreement.

Which languages may be used in UPC proceedings?

Contracting member states can designate their own official European languages as the language of proceedings in a local and regional division. They can also designate English, French or German (being the EPO official languages). Notwithstanding the choice made by a contracting member state, the parties can also agree, or the Court can order, that the language in which the patent was granted (French, German or English) is the appropriate language, on a case-by-case basis.

In the central division, the language of proceedings will be the language in which the patent concerned was granted.

The language at the Court of Appeal will be the same as used in the First Instance Court or the language of the patent (where the parties agree), except for in exceptional circumstances.

At a glance

It appears clear that the Rules have been drafted in such a way to allow flexibility depending on, for example, the parties' cases and number of issues in play. For example, the broad scope of the potentially available evidence will not be relevant in all cases but may be relevant in some.

This is perhaps not surprising - the vast majority of the Rules were developed as a result of cross-border cooperation between practitioners and stakeholders (including in the UK) and they build on established and successful roots.

In developing its precedent the Court is likely to have in mind the historic implementation (and effect) of these rules in other jurisdictions, and we would therefore encourage users of the system to be "up to speed" on the practice of other courts.

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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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