A guide to the UPC and the UP - Flipbook - Page 333
28 U.S. Code § 1782 (for Evidence Sought from the United States)
17-23 Where evidence is sought from an individual domiciled in the United States, the party seeking to
obtain that evidence may consider using the procedure available under 28 U.S. Code § 1782 as
an alternative to the Court issuing a letter rogatory. This provision enables US district courts to
provide assistance to foreign and international tribunals and to litigants before such tribunals
by compelling persons residing within their district to produce documents or provide testimony
for use in those proceedings. This provision can be engaged either by way of a letter rogatory
issued by a foreign tribunal or upon the direct application of an interested party. In many cases,
this second option of a direct application by an interested party will provide a quicker and more
direct procedure than the Court issuing a letter rogatory.
Evidence at Each Stage of the Proceedings
17-24 The evidence required will either relate to the substantive issues between the parties,
such as infringement or validity of a patent, or to a specific application a party is making
under the RoP. 46
17-25 Written and other physical evidence relating to substantive issues in the proceedings will
generally be produced during the written procedure. Whilst a claimant will normally be able
to prepare their evidence before commencing proceedings, a defendant will only have three
months after service of the claimant’s initial written pleading to prepare a defence. This will put
the defendant under significantly more time pressure as it will potentially need to identify and
produce much of the evidence on which it will later rely. This could be an especially heavy
burden for a defendant in a revocation action who wishes to raise a counterclaim for
infringement or in an infringement action who wishes to raise a counterclaim for revocation.
17-26 The production of written and other physical evidence may also run over into the interim
procedure and will be subject to management by the judge-rapporteur. It will also be relevant
in any subsequent proceedings to determine the level of damages or compensation following
a finding of infringement.
17-27 Oral evidence will, if ordered at the interim conference under r.104(g) RoP, then be heard
during the oral procedure, either at the oral hearing itself or at a separate witness hearing,
held before the oral hearing.
17-28 In addition to evidence in support of a party’s substantive case, a party will often need to
provide the Court with evidence in support of a specific application it makes. For example an
application for provisional measures under r.206 RoP must be supported by “the facts and
evidence relied on in support of the Application”. 47 This requirement is common to many of the
rules setting out the required content of various applications. 48 Beyond the general definition of
the means of evidence in r.170(1) RoP, the RoP do not contain any restrictions on the type of
evidence which can be provided in support of these applications. 49 One obvious form of
evidence in support of an application would be witness evidence provided by the attorneys with
conduct of the proceedings explaining the background to and the reasons for making the
application. Figure 17-1 lists the evidence points arising at each stage of the proceedings.
17-29 In appeal proceedings, the parties are limited to relying on the facts and evidence submitted at
first instance. Only in exceptional circumstances will parties be allowed to submit new facts or
46
47
48
49
e.g. an application for provisional measures under r.206 RoP.
r.206(2)(d) RoP.
See for example r.221(2)(b) RoP regarding applications for leave to appeal and r.88(2) RoP regarding applications to annul
or alter a decision of the Office.
One exception is r.320(3)(b) RoP which specifies that an application for the re-establishment of rights must contain
the evidence relied on in the form of affidavits from certain persons involved with the relevant non-compliance.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 323
