A guide to the UPC and the UP - Flipbook - Page 348
experiments carried out for the purpose of the proceedings” as a means of evidence.
Experiments can be relevant for both infringement actions 136 and revocation actions. 137
17-96 Experimental evidence is not used as a form of evidence in all legal systems. For instance,
experiments are not recognised in German civil procedure law as a distinct category of
evidence, although experimental results are often introduced as a substantiated statement
supported by a party’s documentary evidence or as an expert opinion ordered by the Court.
The specific reference to “conducting comparative tests and experiments” as a means of
obtaining evidence results in the position under the RoP being closer to that in the UK which
may allow experiments as a means of evidence in patent litigation in order to establish
particular facts.
17-97 On the face of it, there appear to be two routes for introducing experimental evidence under
the RoP:
– First, r.201 RoP gives the Court the right to order experiments to prove a statement of
fact for the purposes of proceedings before the Court, on a reasoned request by a party.
In practice, experiments may be particularly important for arguments concerning the validity
of the patent, i.e. anticipation, obviousness or insufficiency, or be useful in supporting or
refuting an alleged patent infringement. R.201 RoP sets out the procedure for obtaining a
court order to carry out experiments. The expert who performs the experiments will be a
court expert.
– Second, the parties or parties’ experts seem to have a right to carry out experiments and
submit the results in Court. This is emphasised in r.201(1) RoP, which is stated to be without
prejudice to the possibility for the parties or parties’ experts to carry out experiments. It is
assumed that such experiments could be introduced under the general rule that a party may
provide any expert evidence that it considers necessary. 138 This could include experiments
carried out by party experts for inclusion into an expert report. 139
Procedure and Requirements for Requesting Experiments to be Ordered
by the Court
17-98 For an experiment to be ordered by the Court, a reasoned request by a party is necessary. 140
The RoP do not give the Court a right to order an experiment of its own motion. Such a right
existed in the 16th draft RoP but was removed following consultation, the reasoning being that,
in line with the principle of party disposition, the Court should not take the initiative to order
experiments of its own motion. However, at the interim conference stage, the judge-rapporteur
may issue orders relating to various forms of evidence including experiments. 141 It remains to
be seen in practice what form these orders may take (if any), if neither party has requested
an experiment.
17-99 The requirements for the reasoned request by a party are laid out in r.201(2) RoP. In short the
request must:
– Identify the facts intended to be established by the experiments, describe the proposed
experiments in detail and the reasons for carrying out the proposed experiments; 142
136
137
138
139
140
141
142
r.13(1)(m) RoP.
r.24(f) RoP.
r.181(1) RoP.
See paragraphs 17-81 to 17-89 on party experts.
r.201(1) RoP.
r.104(e) RoP.
r.201(2)(a) RoP.
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A Guide to the UPC and the UP 338
