A guide to the UPC and the UP - Flipbook - Page 329
17-05 Any fact that is not specifically contested by any party shall be held as true as between the
parties. 8 The word “specifically” is important in this provision; a party must specifically raise
each instance of contested fact. It is not sufficient to include a general catch-all statement in
its submissions, such as “all the facts are contested unless expressly admitted”.
17-06 The anticipation of statements of facts which are likely to be contested may result in
unnecessary pleadings. The parties may seek to indicate the means of evidence by which they
intend to prove a fact which does not end up being contested. During the public consultation
on the RoP, it was suggested that the party making the statement of fact should not wait in the
hope that the other party forgets “specifically” to contest it. If this is correct, it supports the view
that it will be necessary for all the evidence to be fully prepared at the outset of the case.
17-07 A party making a statement of fact that is contested or likely to be contested by the other
party is also under a duty to produce evidence available to the party regarding that statement. 9
The Court has the power to order the party making the statement to produce evidence that lies
in the party’s control. 10 Failure to do so shall be taken into account by the Court when deciding
the issue in question.
Duties of the Legal Representatives
17-08 The parties’ representatives also owe duties to the Court in respect of the evidence. They have
an obligation not to misrepresent cases or facts before the Court either knowingly, or with good
reasons to know 11 and must strictly comply with the Code of Conduct adopted for such
representatives by the Administrative Committee. 12 The Code of Conduct for Representatives
was published by the Administrative Committee on 8 February 2023. 13
Burden of Proof
17-09 The burden of proof of facts lies with the party relying on those facts. 14 However, this burden
can be reversed in certain very specific circumstances. According to art.55(1)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. 15 The same principle is
also said to apply in art. 55(2) UPCA where there is a substantial likelihood that the identical
product was made by the patented process and the patent proprietor has been unable, despite
reasonable efforts, to determine the process actually used for such identical product. Whilst the
application of art.55(1) UPCA is clear, there may be questions raised about the situations in
which the provision under art.55(2) UPCA applies. On the face of it, art.55(2) UPCA appears
to cover situations where the patented process is for the manufacture of a known product,
i.e. the claimed process might be more efficient or in some way new, but the resulting product
is known. If, in the alternative, it is (by reference to the principle in art.55(1) UPCA) intended to
apply only to new products made by the patented process, then it is unclear what art.55(2)
UPCA adds over art.55(1) UPCA. Certainly if the former interpretation is correct, it extends the
principle very much more widely beyond that which is in the CPC. 16 It is worth noting that this
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r.171(2) RoP.
r.172(1) RoP.
r.172(2) RoP.
art.48(6) UPCA and r.284 RoP.
r.290(2) RoP.
In particular, r.3 Code of Conduct for Representatives sets out the conduct of representatives’ dealings with witnesses and
party experts. See chapter 23 (Legal Representation, Privilege and Code of Conduct) paragraphs 23-41 and 23-42.
art.54 UPCA.
The articles covering burden of proof are specifically without prejudice to arts 24(2) and (3) UPCA which state that, to the extent
the Court bases its decision on national law or the law of non-Contracting Member States, how the relevant law is to
be determined.
art.55(1) UPCA is identical to art.35(1) CPC but art.55(2) UPCA has no parallel provision in the CPC.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 319
