A guide to the UPC and the UP - Flipbook - Page 330
provision in the 11 November 2011 draft version of the UPCA 17 related to products obtained
through a patented process in general, without the requirement that the product be new.
Thus, both sections appeared to be applicable to the same type of product. The word “new”
was introduced in art.55(1) UPCA in the 26 September 2012 draft. 18 In the CPC, as voluntarily
implemented in national law in Member States, the reversal of the burden of proof only applies
to new products. Thus, following the approach of the CPC, art.55(2) UPCA might only apply to
new products. The Court will have to clarify in its case law what the differences between the
two sections are and in what situations they should be applied.
17-10 The Court provides for a number of specific mechanisms to assist a party with its burden of
proof by which that party can obtain evidence from the other parties to the litigation and/or
third parties.
Means of Evidence and Means of Obtaining Evidence
17-11 There does not appear to be any restriction on the type or “means” of evidence which can be
relied on in Court proceedings. R.170(1) RoP includes the following list of the means of evidence
which can be used:
– Written evidence, whether printed, hand-written or drawn, in particular documents, written
witness statements, plans, drawings, photographs;
– Expert reports and reports on experiments carried out for the purpose of the proceedings;
– Physical objects, in particular devices, products, embodiments, exhibits, models; 19
– Electronic files and audio/video recordings.
17-12 Guidance on the means of obtaining evidence is set out in art.53(1) UPCA and r.170(2) RoP.
Both the UPCA and the RoP provide a near-identical list of eight possible means of
obtaining evidence:
– Hearing the parties; 20
– Requests for information; 21
– Production of documents (it is assumed this is intended to mean voluntary production
of documents);
– Summoning, hearing and questioning witnesses; 22
– Appointing, receiving opinions from, summoning, hearing and questioning of experts; 23
– Ordering inspection of a place or physical object; 24
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“Draft agreement on a Unified Patent Court and draft Statute – Revised Presidency text” Council of the European Union,
16741/11 PI155 COUR 64 available at http://register.consilium.europa.eu/doc/srv?l=EN&f=ST%2016741%202011%20INIT
[Accessed 25 April 2023].
“Draft agreement on a Unified Patent Court and draft Statute – Consolidated text” Council of the European Union, 14268IR
PI113 COUR 66 available at http://data.consilium.europa.eu/doc/document/ST-14268-2012-INIT/en/pdf
[Accessed 25 April 2023].
Although models are mentioned, the RoP do not provide any guidance on how they are to be dealt with.
From the perspective of German procedural law, hearing the parties is also considered a means of evidence. However, it is
only considered on a subsidiary basis (s.445(1) German Civil Procedural Rules) and it must be carefully considered by the
judges in the assessment of all the evidence (s.286 German Civil Procedural Rules).
r.191 RoP. See chapter 18 (Orders to Produce Evidence Including “Saisies”) paragraphs 18-107 to 18-114.
See paragraphs 17-44 to 17-64 and 17-90 to 17-94.
See paragraphs 17-65 to 17-94.
r.199 RoP. See chapter 18 (Orders to Produce Evidence Including “Saisies”) paragraphs 18-84 and 18-85.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 320
