A guide to the UPC and the UP - Flipbook - Page 354
Introduction
18-01 The UPCA provides two golden rules relating to evidence. The first is that each party bears its
own burden of proof for the facts on which it relies and only in very specific circumstances is
this rule reversed. 1 But this poses a practical difficulty as it is often the case that one of the
parties to the dispute has documents or information that is relevant to the opposing party’s
case. The UPCA and the RoP therefore provide a second golden rule, that is, the parties need
to co-operate with the Court. Although there is no rule prohibiting a party from simply denying
or not admitting the facts alleged against it, a party must produce the evidence available to it
if that fact is contested or likely to be contested 2 and must obey orders of the Court to produce
evidence, even if that evidence could be prejudicial to its case. The Court may draw negative
inferences from failure to comply with its orders to produce evidence when deciding the issue
in question. 3
18-02 This chapter deals with the measures contained in the UPCA and further described in the RoP
allowing a party to obtain evidence from the other party or a third party. Such procedures can
be conducted prior to the launch of proceedings on the merits or during the proceedings, and
either on an ex parte basis or on an inter partes basis. They incorporate and, in some instances,
go further than the provisions in arts 6, 7 and 8 Enforcement Directive.
Evidential Tools Available under the UPCA and RoP
18-03 The tools available to the Court to order evidence are set out in arts 59 to 61 and 67 UPCA and
part 2 (Evidence) of the RoP, in particular rr.190 to 199 RoP. Neither the UPCA nor the RoP ranks
these means of obtaining evidence, as is the case, for instance, in the Napoleonic Civil Code. 4
They are summarised in table 18-1 and briefly described below.
Table 18-1: Orders to Preserve and Produce Evidence
Available prior
to the start of
proceedings?
Available
ex parte
Available
against 3rd
parties?
Order
Basis in UPCA/RoP
Order to preserve
evidence (saisie)
art.60/rr.192-198
Yes
Yes
No
Order for
inspection
art.60/r.199
Yes
Yes
No
Order to
produce evidence
art.59/r.190
No
No
Yes
Order to communicate
information
art.67/r.191
No
No
Yes
18-04 A saisie is a familiar procedural tool in many civil law jurisdictions. Apart from its relative speed,
efficiency and low cost, the saisie procedure most importantly enables a patentee to assess
whether there is a realistic prospect of prevailing in an infringement action before deciding to
embark on full-blown and costly patent litigation. This is one of the main reasons why saisies
1
2
3
4
arts 54 and 55 UPCA. See chapter 17 (Evidence) paragraphs 17-09 and 17-10 for further information on the burden of proof.
r.172(1) RoP.
rr.172(2) and 190(7) RoP. See chapter 17 (Evidence) paragraphs 17-03 to 17-08 in relation to the duties of the Court,
the parties and the legal representatives as they pertain to evidence.
See, for example, arts 1317 to 1369 Belgian Civil Code which provides such a ranking.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 344
