A guide to the UPC and the UP - Flipbook - Page 377
18-102 It appears that the term “self-incrimination” contained in art.59(1) UPCA is limited to criminal
proceedings and r.179(3) RoP will not allow a party to refuse to provide evidence simply on the
ground that the evidence is detrimental to their case. The privilege only applies to criminal
prosecution under applicable national laws. It remains to be seen whether this will cover:
– Only the laws of the Contracting Member State where the division hearing the case
is located;
– The laws of any Contracting Member State; or
– The laws of any country, whether it is a Contracting Member State or not.
18-103 However, even if the privilege is limited to the first or second option, the risk of selfincrimination under foreign law may still be a factor which the Court takes into account when
deciding whether and on what terms an order should be made.
18-104 It remains to be seen whether, in the context of an order under rr.190 or 191 RoP, the
privilege will apply to a corporate entity as it does to individuals. The right to a fair trial
under art.6 European Convention on Human Rights (which is often invoked as the basis
for a privilege against self-incrimination) also extends to corporate entities.
18-105 In brief, privilege attaches to all communications between a client and its lawyer or patent
attorney, irrespective of whether it has taken place in connection with the proceedings
before the Court or otherwise. 126 The same privilege attaches to employed lawyers and
patent attorneys, provided that they are instructed to act in a professional capacity. 127
All communications and documents, work product and any record of any such communications
are privileged from disclosure. 128 Litigation privilege differs from attorney-client privilege in that
it attaches to confidential commutations between a lawyer or patent attorney and a third party
for the purposes of obtaining information or evidence of any nature for the purpose of or for
use in any proceedings, including proceedings before the EPO. Again, such communications
are privileged from disclosure. 129 For a full explanation of attorney-client privilege and litigation
privilege, see chapter 23 (Legal Representation, Privilege and Code of Conduct).
Appeal
18-106 The order to produce information must indicate that an appeal may be lodged by the
defendant. 130 As with an appeal of an order for a saisie, an appeal from an order to produce
evidence must be lodged within 15 days of service of the order and is fast-tracked thereafter. 131
The appeal will not prevent the continuation of the main proceedings, but the Court of First
Instance cannot give a decision in the main proceedings before the decision of the Court of
Appeal has been given. 132 It is unclear what the status of the contested evidence, or the lack
thereof, would be during the trial if an order to obtain evidence is executed but then appealed
and the Court of Appeal has not, by the time of trial, given its decision. However, such a
situation is unlikely to occur given the speedy timetable for hearing such appeals and the
Court’s ability to expedite hearings where necessary.
126
127
128
129
130
131
132
r.287(1) RoP.
r.287(2) RoP.
r.287(3) RoP.
r.288 RoP.
r.190(6) RoP.
rr.190(6), 220(1)(c) and 224(1)(b) RoP.
art.74(3) UPCA.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 367
