The UPC is expected to kick off in about five months, and innovators and practitioners are wondering what kind of evidence might become instrumental in winning their cases – and when it will be needed. In this article, we look at whether it is right to view proceedings as “frontloaded”, or could there be more to the story? Will we see a document-focused approach like in the EPO and many European courts, or proceedings where oral testimony of expert witnesses is more relevant? Below, we review possible answers, based on legislation and our knowledge of and experience in the EU courts.

When will evidence be needed?

The UPC is often described as a “frontloaded” procedure because the rules require parties to present both “an indication of the facts relied on”[1] and “the evidence relied on, where available”[2], in initial written pleadings. As a result, we should expect to see evidence-heavy submissions from the outset of most UPC actions (the safest approach), like in the EPO, France, the Netherlands, and Germany.

Nevertheless, this may not be the full picture. Within the framework of the rules, parties can seek permission to file evidence at later stages, for example:

• The judge-rapporteur has a general power to permit further evidence, e.g. in interim conferences[3];
• The judge-rapporteur may permit evidence to prove disputed facts[4];
• Evidence from discovery (disclosure) will only come after an order[5];
• At the hearing, oral evidence may be given[6] (see below for a discussion of whether expert witness testimony is likely); and
• Even after the hearing has started, an adjournment for further evidence could be given[7].

We expect to see parties attempting to exploit these provisions, for example, defendants arguing that their evidence was not “available” at the time of their pleadings. Expert evidence may also be an area where parties seek to expand their case later (see below for a discussion of the likelihood).

The first UPC actions will be an indicator of the judges’ appetite for such evidence, and the court of appeal may have to harmonise practice in the first few years.

Will expert evidence be important?

Parties will wonder whether the court will prefer an expert-focused or a document-focused approach. Indeed, this question will be particularly pertinent under “frontloaded” proceedings, since parties may feel pressure to appoint experts quickly.

The legislation itself leaves the door open to either option. Article 53 of the UPC Agreement lists “opinions of experts” as one of the types of evidence that can be used, and there is a procedural framework for plenty of expert evidence, ranging from written reports, discussions with experts in the interim hearings, oral submissions, and live cross-examinations[8]. These extensive provisions may reflect the UK’s involvement in drafting the UPC legislation; The UPC Advisory Panel was, at one stage, 50% British judges (three of six) and chaired by Sir Robin Jacob.

However, most of the above provisions are contingent on the judges’ permission, so can we predict whether or not the judges will actually allow (or encourage) expert involvement in practice?

Many commentators are sceptical, and the following factors probably steer away from expert involvement:

• Many UPC judges are from EU countries where paper evidence dominates, e.g. France, Germany, and the Netherlands, and their past experience may bias towards using paper evidence alone.
• UPC panels will always include a technically qualified judge if the proceedings involve patent validity, and such judges will be able to review and interpret scientific documents without expert assistance, similar to the EPO (the Technical Boards of Appeal has remarked that the presence of technically qualified members normally removes the need for expert assistance).
• Early users of the system will certainly frontload their initial pleadings with heavy support by paper evidence (especially as they will be unsure of the weight of expert evidence and the opportunities to file evidence later). Faced with a document-heavy case from the outset, the judges may decide at the interim hearings that additional expert evidence is superfluous.

In view of the above, the mention of “opinions by experts” in Article 53(e) of the UPC agreement may not, in practice, prove to be utilised heavily. Indeed, Article 53 bears a striking resemblance to Article 117 of the EPC, which, despite also mentioning “opinions by experts”, has never been a launchpad for significant expert involvement at the EPO.

We cannot, nevertheless, rule out expert evidence in some cases, if the judges feel that it is appropriate. Indeed, some judges may be familiar with expert involvement from their experience in national courts, and therefore be more receptive. For instance, Sweden has a long-standing practice of oral evidence of experts in patent cases, and there are Swedish judges in both the Nordic-Baltic Regional Division and in the Court of Appeal of the UPC. If Spain joins the UPC, then its judges would also be familiar with expert-heavy patent litigation, although it will be some time before Spanish judges are in the system, if Spain joins at all. Other EU countries with expert involvement include the Netherlands (where judges are accustomed to asking experts questions in trial) and Ireland (which will not have any judges in the system initially, having not yet ratified, but is expected to ratify in the next 1-2 years).

To summarise, we expect documentary evidence to dominate, with some expert evidence in writing, and judges asking experts questions if they need more. In some cases, the judges may permit more extensive oral evidence, perhaps particularly Swedish judges. If parties believe that Swedish judges will be more receptive than others, then we may see a push towards the Nordics’ regional division in some cases.

[1] Rules 13(l) and 44(f).

[2] Rule 13.1(m) for the statement of claim, and the same requirement exists for all of the main pleadings.

[3] Rules 103.1(c) and 104(e).

[4] Rule 104(a) and 176(b).

[5] Rules 190-191.

[6] Rule 112.2(b)

[7] Rule 114.

[8] For instance, under Rule 178.4 the Court can question witnesses, and under Rule 178.5 parties can question witnesses (i.e. cross examination).