A guide to the UPC and the UP - Flipbook - Page 342
and are subject to lengthy cross-examination during the oral hearing. In Germany, the usual
procedure is for the court to appoint its own expert (mostly after an offer of proof from the
party who bears the burden of proof) who then produces a written report, although a party
may also introduce its own expert evidence and does not need the consent of the other party
to do so. In some cases, the expert can be summoned to the hearing in order to explain the
report orally and the parties can ask specific questions, although there is no right to crossexamination. In the Netherlands, the court rarely appoints experts, but evidence from
party appointed experts are often relied on by the court. Such evidence is normally submitted
in writing.
Court Appointed Experts
17-67 The statutory basis for the Court to appoint an expert is provided by art.57(1) UPCA,
which confers the general right to appoint experts at any time, “in order to provide expertise
for specific aspects of the case”. Guidance on the scope of this right is given in rr.185 to 188
RoP. The appointment of the Court expert is specifically stated to be without prejudice to the
possibility for the parties to produce expert evidence and therefore it was envisaged that in
some cases it will be possible to have both a Court appointed expert and party appointed
experts instructed. However, it should also be borne in mind that in most cases (either because
they are taking place in the central division or because there is a counterclaim for revocation in
a case taking place in a local or regional division) a technical Judge will be sitting on the panel.
It remains to be seen therefore how difficult it will be to persuade the Court to appoint a
technical expert.
17-68 R.185 RoP sets out detailed guidelines for the appointment of a Court expert. This rule makes
clear that the Court can appoint a Court expert of its own motion, but only after hearing the
parties. The Court can appoint a Court appointed expert “at any time”, although it is noted that
one of the aims of the interim conference is to enable the judge-rapporteur to issue orders
regarding Court experts. 100
17-69 The scope of the issues on which a Court appointed expert may be asked to resolve is wide;
r.185(1) RoP states that the Court may appoint an expert in relation to a “specific technical or
other question in relation to the action”. The wording of r.185(1) RoP means that experts are
therefore not restricted to assisting on technical issues, and the Court might also seek a legal
or economic expert opinion. This could be relevant where, for example, the Court is required
to apply the law of the place of business of the patent proprietor 101 or has to decide on the
calculation of damages. This conclusion stems not only from the wording of rr.185(1) and (4)(c)
RoP but is also reflected by the drafting process leading up to the RoP. In the 15th draft RoP,
the appointment of a Court appointed expert was limited to resolving technical questions. 102
This restriction was removed in response to comments made in the course of the public
consultation on the draft RoP 103 and also brings r.185(1) RoP into line with art.57(1) UPCA,
which is not restricted to technical experts.
17-70 The Registry is required to maintain an indicative list of experts. 104 This is different to the
current German practice whereby certain chambers or judges may keep list of experts they
100
101
102
103
104
r.104(e) RoP.
See chapter 7 (Applicable Law) paragraphs 7-27 to 7-37.
The 15th draft RoP as of 31 May 2013 reads as follows:
r.185(1): “Where the Court must resolve a specific technical question in relation to the action, it may of its own motion
(and after hearing the parties) appoint a court expert”;
r.185(4): “the Court shall appoint a court expert by way of order which shall in particular specify: …
(c) the evidence submitted by the parties in respect of the technical question”.
“Stellungnahme zum Preliminary set of Provisions for the Rules of Procedure of the Unified Patent Court”, 30 August 2013,
available (in German) at https://www.patentanwalt.de/en/chamber/position-papers.html [Accessed 25 April 2023].
art.57(2) UPCA and r.185(9) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 332
