A guide to the UPC and the UP - Flipbook - Page 319
Duty on the Applicant
16-59 For the purpose of ex parte applications, the applicant has a duty to disclose any material fact
known to it which might influence the Court in deciding whether to make an order without
hearing the defendant. 62 This duty expressly includes informing the Court about any pending
proceedings and any previously unsuccessful attempts to obtain provisional measures in
respect of the same patent. The duty is wide-ranging and includes, for example, referring the
court to the existence of defences or obvious counter-arguments which would be available
to the defendant. Other jurisdictions, such as France and Belgium, impose a similar duty on
applicants applying for ex parte measures.
16-60 Typically, the existence of national judgments or pending proceedings involving the
same patent should be disclosed to the Court. Contractual relationships, such as a licence,
between the applicant and the alleged infringer should also be disclosed if they relate to the
asserted patent or to the allegedly infringing products. Although the judges can themselves
verify whether other divisions are seized with actions relating to the same patent or product,
an applicant is expected to provide such information spontaneously. Arguably, that duty should
also exist for proceedings and decisions relating to the same patent family outside Europe.
16-61 The high level purpose of such a duty is an attempt to reduce the scope for abuse of a system
which provides powerful provisional measures to be ordered without the person who must
comply with the measures being heard or even aware of the application and as such are a
denial of a defendant’s fundamental right to be heard before an order is made against them.
It relies upon the professional integrity of the legal professionals 63 who act before the Court to
advise their clients as to the requirements of this duty and on the honesty of litigants, since the
duty here is expressly placed on the applicant.
16-62 According to r.206(3)(b) RoP, where the applicant seeks to proceed without the defendant being
notified, information about prior correspondence between the parties concerning the alleged
infringement must be provided with the application. This is an important consideration since
if the applicant has already notified the defendant of the alleged infringement, a fortiori
notification has been given of an intention to apply for a provisional injunction and this
would mitigate against the need to avoid notifying the defendant of the application. Thus the
practice in some jurisdictions of sending warning letters requires careful consideration under
the Court’s procedure.
Opportunity to Withdraw the Application
16-63 The RoP do not provide an unqualified right for an application to be determined without
notifying the defendant. The Court has discretion whether to consider the application ex parte
and, if so, whether to inform the defendant. 64 However, r.209(4) RoP provides that if the Court
decides not to grant the order without hearing the defendant, the applicant may withdraw the
application and request that the application and its contents remain confidential. There is an
arguable ambiguity here in that r.209(4) RoP applies when the Court decides not to grant
provisional measures without hearing the defendant. Thus the most literal reading of this part
of the rule appears to suggest it applies if the Court rejects an application whereas the
reference in the rule to the withdrawal of the application would suggest that the rule’s effect
applies prior to determination of the substantive application, that is, when the Court indicates
that it will inform the defendant under r.209(1)(a) RoP or summon both parties to a hearing
under r.209(1)(b) RoP. The rule also does not refer to the Court notifying the applicant, although
the need to do so is implicit in the ability of the applicant to exercise its right to request that the
application remain confidential. These ambiguities are not reflected in a similar provision in
62
63
64
r.206(4) RoP.
Representatives have an obligation not to misrepresent cases or facts (art.48(6) UPCA and r.284 RoP) and must comply with
the Code of Conduct – see chapter 23 (Legal Representation, Privilege and Code of Conduct).
See paragraph 16-45.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 309
