A guide to the UPC and the UP - Flipbook - Page 362
18-33 The response lodged by the defendant, if invited, should set out: 51
– The reasons why the application should fail;
– The facts and evidence relied on, in particular any challenge to the facts and evidence relied
on by the applicant; and
– Where main proceedings on the merits have not yet started, the reasons why the such an
action should fail and an indication of the facts and evidence relied upon in support. 52
18-34 This suggests that the Court may prolong the written procedure by inviting the defendant to
respond, for example, in relation to the infringement of the patent. Alternatively, the Court
may move directly to the oral procedure, in which case the written procedure will be closed.
The procedure followed will be for the judge-rapporteur to decide.
18-35 In exercising its discretion on how to proceed, the Court must take into account: 53
– The urgency of the action;
– Whether the reasons for not hearing the defendant appear well-founded; 54 and
– The probability that evidence may be destroyed or otherwise cease to be available.
Urgency
18-36 Urgency can of course be demonstrated in cases where there is only a limited amount of time
available for collecting the evidence; for instance, when a trade fair is held over a few days
before all the exhibits are then removed. In such a case, it is obvious that the matter is urgent in
that the evidence of infringement will no longer be available after the trade fair has come to an
end. But these cases are the exception and, in most countries where a saisie is available under
national law, urgency is not a requirement, even when the defendant is not heard. In relation to
the Court, the Expert Group of the Preparatory Committee has confirmed that urgency is only
one of the aspects the Court should take into account when examining the application under
r.194 RoP; the rules do not exclude a measure without urgency.
18-37 Under the UPCA and RoP, there are more tools available to a claimant than before many
national courts where saisies have been the traditional method of obtaining evidence from
the other party; a claimant can apply for an order that the defendant produce evidence or
communicate information. 55 The Court is therefore likely to take these other remedies into
consideration and, if they would be more suitable and the timetable allows, will not grant a
saisie. On the other hand, it is also worth bearing in mind that witness evidence is, in most civil
law traditions, considered less reliable than documentary evidence and something of a last
resort. The Napoleonic Civil Code that lies at the heart of the current French and Belgian Civil
Codes, for instance, ranks witness evidence below documentary evidence. The Civil Code
even provides that documentary evidence cannot be overridden by a witness statement.
Since only a few of the Court’s judges will be familiar with the mechanics of hearing a witness
and appreciating a witness statement in a patent trial, it is likely that some judges may be
more open to applications for saisies than others, so that evidence can be collected in
tempore non suspecto.
51
52
53
54
55
r.194(1)(a)(i) to (iii) RoP.
Note the distinction between the requirement to provide the facts and evidence relied upon as to why the application should
fail (r.194(1)(a)(ii) RoP) and the requirement to provide an indication of the facts and evidence relating to why the main
proceedings should fail (r.194(1)(a)(iii) RoP).
r.194(2)(a) to (c) RoP.
See paragraphs 18-68 to 18-82 for applications made ex parte.
rr.190 and 191 RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 352
