UPC Procedure

It is clear from the detailed Rules of Procedure, that action before a UPC Court will place far more emphasis on front-loaded written pleadings and evidence than parties are used to in the UK. In the Rules, the timetable for each type of substantive action is set to achieve a Judgment on the merits around a year after the claim is issued. This means that parties seeking  to initiate an action will have to ensure that their case is fully worked up before  issuing proceedings and, while there  is some leeway to request extensions of time, parties  who are sued (possibly in another language) will need to respond rapidly to meet tight deadlines.

The provisional measures available to litigants in the UPC reflect the legal traditions of the participating member states.  Patentees can apply for provisional measures such as injunctions, orders for the preservation of evidence, inspection and freezing of assets. Parties who consider that there is a risk of such measures being taken against them, can file protective letters with the Registry.

Once issued, substantive UPC actions have 3 phases: (i) the Written Procedure; (ii) the Interim Procedure; and (iii) the Oral Procedure. The Written Procedure where the parties set out their submissions, facts and evidence should take approximately 5 to 7 months. After closure of the Written Procedure, the Interim Procedure starts and should be completed over 3 months followed by a summons for an Oral Hearing. The Oral Hearing will be on at least 2 months’ notice (unless a shorter time is agreed by the parties).

During the Interim Procedure, there may be an interim conference, which may be held in Court[1] but preferably will be held via telephone or videoconference[2].  During this step of the proceedings, the Judge-Rapporteur[3]  will seek to identify the main issues and determine which relevant facts are in dispute. The Judge-Rapporteur will also establish the schedule for the proceedings and where appropriate, issue orders for further pleadings, discovery (including from third parties), experts (including a Court-appointed expert), experiments, inspections and further written evidence. The Judge-Rapporteur can also hold preparatory discussions with witnesses and experts to determine whether or not to hold a separate hearing of witnesses and experts before the panel before the Oral Hearing. The Judge-Rapporteur is also required to explore with the parties whether it is possible to settle the dispute or refer it to mediation/arbitration.  Another important task is for the Judge-Rapporteur to decide the value of the dispute and obtain an estimate from the parties of their recoverable legal costs.

Once the proceedings move into the Oral Procedure phase, the Presiding Judge will take over management of the action. The Oral Hearing itself will be a 1-day hearing where the parties can make their Oral Submissions and if ordered, any cross-examination of witnesses and experts. The Presiding Judge has authority over the Oral Hearing and must ensure it is conducted fairly, efficiently and in an orderly manner. To achieve this, the Presiding Judge can limit the length of the parties' oral submissions. The Oral Hearing shall, unless ordered otherwise, be open to the public and will be audio recorded. Simultaneous translation of the Oral Hearing is also available to parties on request.

Following the Oral Hearing, the Court may give its decision on the merits immediately after the closure of the Oral Hearing and provide its reasons at a later date. Alternatively, the Court may give its decision on the merits after the Oral Hearing and shall endeavour to do so within 6 weeks of the Oral Hearing. If there are parallel proceedings ongoing, the Court may stay its decision, or make it conditional on e.g., the validity of the patent being upheld. The Court will also decide in principle which party shall bear the costs of the proceedings[4]and may order an interim award of damages to the successful party.

Any appeal must be lodged by the appellant within 2 months of service of a final decision of the Court of First Instance (together with the relevant fee). A Statement of Grounds of Appeal must follow within a further 2 months. It is also possible to apply for the appeal to have a suspensive effect on the Decision. Appeals against decisions taken on provisional and protective measures and interim decisions have shorter deadlines (15 days) and are subject to a requirement to obtain leave to appeal from the Court. If the initial request for permission is denied, a further request for a discretionary review to the Court of Appeal may be made to a single standing Judge



[1] If the Interim Conference is held in Court then it will be open to the public unless ordered otherwise.

 

[2] The Interim Conference will be recorded and made available to the parties after the hearing.

 

[3] One of the legally-qualified Judges on the appointed panel will be designated as Judge-Rapporteur for each action.

 

[4]There is a separate procedure for the determination of damages and also for a costs decision.

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