Means of evidence before the UPC

Evidence is of substantial importance in civil proceedings. This naturally also applies to patent infringement proceedings and is explicitly reflected in the RoP (Rules of Procedure of the Unified Patent Court) in R. 171.1, according to which the UPC will take into account failure to indicate the means of evidence regarding a contested fact when deciding the issue in question.

What means of evidence are admissible?

Art. 53 UPCA and Rule 170 RoP list a variety of admissible means of evidence and means of obtaining evidence.

Accordingly, admitted is written evidence, whether printed, hand-written or drawn, in particular documents, written witness statements, plans, drawings, photographs. Further admitted are expert reports and reports on experiments carried out for the purpose of the proceedings, physical objects, in particular devices, products, embodiments, exhibits, models as well as electronic files and audio/video recordings. The means of taking evidence shall include, in particular, the 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.

The listing is not exhaustive due to the inclusion of the wording "in particular" in both provisions. Accordingly, the parties and the UPC are free to submit respectively consider other evidence as well. This may constitute a significant deviation with regard to individual national jurisdictions. In German civil proceedings, for example, only certain means of evidence are admissible (so-called strict evidence). In the Netherlands however there is also an open system of evidence, which means that in principle all means of evidence are allowed provided that one of the parties has brought it forward. The judge is not allowed to rely on other evidence (not brought forward by one of the parties), for instance, evidence he searched on the internet himself.

Neither the UPCA nor the RoP provide for a hierarchy of evidential value. Thus, all evidence or means of obtaining evidence before the UPC have the same evidential value.

Specific provisions on individual means of evidence or means of obtaining evidence

For some evidence or means of obtaining evidence, the RoP contain specific provisions.

The witness evidence is specified in more detail in R. 175 to 180 RoP. R. 175 RoP primarily presupposes a written statement, whereby a written summary is also sufficient. A hearing of witnesses by the court is only subsidiary. This bears the risk of influence by legal representatives in order to increase the credibility of a witness vis-à-vis the court, especially against the background of often complex evidentiary issues in patent infringement proceedings. It is yet to be shown whether the UPC will make generous use of its authority to order a personal hearing according to R. 177.1 RoP in order to discourage any influence. In any case, representatives who appear before the UPC shall, strictly comply with any Code of Conduct by the Administrative Committee. A corresponding code has already been approved and also provides for rules of conduct with regard to witnesses and experts. In the event of a breach, the Court may, at any time, after having given the person concerned an opportunity to be heard, exclude a representative from the proceedings by way of order.

Specific provisions on expert evidence can be found in R. 181 and 185 et seqq. RoP. It is important to note that expert evidence is not limited to court-appointed experts. Court-appointed experts can be appointed by the EPC at any time after hearing the parties. Private expert opinions commissioned by the parties can be equally introduced into the proceedings by way of expert evidence pursuant to R. 181 RoP, Art. 57 UPCA. According to R. 188 RoP UPC in conjunction with R. 178 RoP both can be heard before the court. In addition, private expert evidence is subject to the above-mentioned provisions on witness evidence. Therefore, alternatively, solely a written statement of an expert or a corresponding summary can be submitted as private expert evidence.

Who is obliged to present evidence?

The burden of proof for facts before the UPC lies in principle with the party relying on these facts (Art. 54 UPCA). The UPCA provides for a reversal of the burden of proof only in respect of patents relating to a process for obtaining a new product (Art. 55).

R. 172.1 RoP consequently bases the obligation to present evidence solely on who made the disputed factual assertion. Beyond that, the indication of evidence must be made anticipatorily, namely also for such factual assertions that are "likely to be contested" by the other party. Since, in general, at the time of the initiation of the infringement proceedings, there will be no already contested facts, it is left to the claimant to assess which facts are likely to be contested and therefore require the presentation of evidence.

If a party has presented reasonably available and plausible evidence in support of its claims and has cited evidence in support of those claims that is within the control of the other party or a third party, the court may, upon reasoned request of the party that cited such evidence, also order the other party or the third party to produce that evidence (R. 190.1 RoP, Art. 59 (1) UPCA). Likewise, the court may order the other or the third party to communicate relevant information in their control (R. 191 RoP, Art. 67 UPCA) or an execution of the experiments (R. 201 RoP) on a reasoned request by a party. The latter could open up significant evidentiary advantages, especially with regard to patents in the biological or chemical field. Regarding opportunities provided for UPC proceedings to gather evidence by way of inspection, see our recent publication on the subject.

The UPC itself is granted its own extensive competences in the RoP with regard to the clarification of facts. According to R. 9.1 RoP, the Court may, at any stage of the proceedings, of its own motion or on a reasoned request by a party, make a procedural order such as to order a party to take any step, answer any question or provide any clarification or evidence, within time periods to be specified. Presumably, use of this authority will be made mainly during the interim procedure, in the course of which the judge-rapporteur will undertake all necessary preparations for the hearing. However, due to the possibility of a corresponding request by the parties, the correlation between R. 9.1 RoP and R. 190.1 RoP with regard to measures against the opposing party is not entirely clear at this stage. According to R. 190.2 RoP UPC, the request outlined in the previous paragraph is only possible during the written or interim procedure and not, as provided for in R. 9.1 RoP, at any time of the procedure, i.e. also during the oral hearing. It can be assumed that R. 9.1 RoP only extends to evidence indicated by a party but not presented so far.

When does evidence need to be available to the court?

The Rules of Procedure require that all evidence must at least be indicated with the filing of the respective statement. This follows for the statement of claim in patent infringement proceedings from R. 13 (m) RoP (furthermore for the statement of defence in R. 24 (f) RoP and for the defence to the counterclaim for revocation of a patent in R. 29A (b) RoP). R. 13.1 (q) RoP, as well as 24 (j) and 29A (f) RoP regarding before-mentioned statements, additionally indicate that any witness statements, referred to in the respective statement, must in any case be submitted with the respective statement.

Since the RoP provide for a strict timeline regime (in this respect, we refer to our publication on the timeline of patent infringement proceedings before the Unified Patent Court), evidence should be prepared at an early stage of the proceedings to at least be able to be indicated. If no evidence is indicated in relation to a disputed fact, R. 171.1 RoP states that the court will take the failure to indicate evidence into account when deciding on the matter at issue. A negative decision based on the burden of proof by the UPC is therefore to be expected. For this reason, a court's order to produce evidence should always be complied with in due time, since R. 172.2 RoP likewise states that if evidence that lies in the control of that party is not produced in due time, this will be taken into account in the decision.

At the latest by the end of the interim procedure, all available evidence must be presented in order to be able to request the aforementioned orders for production of evidence, communication of information or carrying out of experiments in due time. Regarding the order for experiments, R. 201.2 RoP even requires that this request be lodged "as soon as practicable" in the interim procedure, which implies that there should by no means be any culpable delay in this regard.

Conclusion

The new provisions created for the UPC provide wide-ranging opportunities for providing evidence. However, the Rules of Procedure pose considerable challenges to parties involved in patent infringement proceedings with regard to the preparation of evidence. The RoP conceptually envisage a fast execution of proceedings, so that a strict handling of belatedly presented evidence by the UPC can be assumed. Against this background, the presentation of evidence should not be delayed under any circumstances.