The UPC Rules of Procedure (the Rules) have been approved. Amendments to the previous (18th) draft (from 2017) have been released by the UPC Administrative Committee, in tracked changes form, with a full consolidated version promised to be “published in English, French and German during the course of the summer, before the Rules’ entry into force on 1 September 2022” according to the UPC website  The Rules have also been approved by the European Commission. One of the most significant changes is to opt-out procedures.

The main changes/additions involve:

• Opt-out and unauthorised opt-out/withdrawal (Rules 5 and 5A)
• Access to pleadings (and decisions and orders) and redaction of these for GDPR and confidentiality reasons (Rule 262)
• Redaction of information as between parties – including confidentiality clubs (Rule 262A)
• Remote hearings/video conferencing for whole hearings/individuals (Rule 112)
• Signing of lodged documents and electronic submissions generally (Rule 4)
• Various amendments to allow notification of the defendant in ex parte applications
• Cooperation with other EU courts and third state courts re taking of evidence
• Service
• Judicial impartiality
• Decisions by default
• The non-suspensory effect of certain categories of appeal

Most of these changes have been made to bring the procedure up to date, allowing for the more on-line nature of court interactions post-pandemic, or where the opportunity to consider  the rules in a more practical context has arisen and gaps have become apparent.  We deal with each of the above in more detail below.

Opt-out applications must be for ALL EP designations not just the UPC participating ones (Rule 5)

• Previously Rule 5.1(b) provided than an “application to opt out shall be made in respect of all of the Contracting Member States for which the European patent has been granted or which have been designated in the application”. The amended wording in the final Rules removes the reference to Contracting Member States. This also applies to Rule 5.7 re withdrawal of opt-out.
• This change means that all EP designation owners must agree opt-out (or withdrawal of opt-out), not just those owning designations for states participating in the UPC. With the sunrise period for registered opt-outs likely to start as soon as Germany deposits its ratification of the UPC Agreement ie around 3 months before the new court commences, and the UPC committee suggesting that early 2023 is a likely start date for the new court, agreement of all designation owners should be sought as soon as possible in order to meet these deadlines.
• Interestingly, the explanatory notes to these changes state that the Contracting Member State wording needed to be removed because: “This wording is inconsistent with the indivisibility of the application to opt out. It implies that the UPC solely has jurisdiction over UPCA Contracting Member States, which is not the case”.  This comment reflects to so-called “long arm jurisdiction” that the UPC may assert over non UPC participating Eu states and even non-EU states.  This is a complex and controversial area on which we will be blogging at a later date.

Opt-out – correcting unauthorised applications for opt-out (new Rule 5A)

• This new rule determines how the Court has to deal with an unauthorised application to opt out or an unauthorised withdrawal of an opt-out.
• The proprietor or applicant (of the patent/application) or holder (of the SPC) may lodge an application to remove the entry of an unauthorised application to opt out or withdrawal of the opt-out from the Registry setting out the reasons.
• The Registrar will ensure that the status of the patent or application or supplementary protection certificate indicated in the register as opted out or opt-out withdrawn shall be marked as subject to an application for removal, and will decide the application for removal “as soon as practicable“. The decision of the Registrar may be reviewed by an application for review to the President of the Court of Appeal.

 Other amends re opt-out

• Rule 5.3(c): The amendment clarifies which number i.e. the EP publication number but not the numbers for local designations is to be cited in the application to opt out.
• Rule 5.4: The first sentence of paragraph 4 specifies that the requirement of representation – otherwise mandatory for proceedings before UPC under Rule 8 – does not apply to the applications to opt-out and for withdrawal of opt-out made pursuant to rule 5. Right holders can make the declaration themselves or they may choose anyone to do it for them.

 Access to UPC pleadings, orders etc and confidentiality (Rule 262)

• Decisions and orders – Rule 262.1(a)

These will now be available publicly on the register (with redaction of personal data (as defined under the GDPR) and confidential information as defined in Rule 262.2. The Court will decide of its own motion what should be redacted, taking into account requests for confidentiality.

• Pleadings and evidence – Rule 262.1(b)

These will be made available to the public on reasoned request to the Registrar (decision made by the judge-rapporteur after consultation with the parties). What such a reasoned request should look like or what factors will be taken into account is not specified in the Rules. The existence of the pleadings (but not contents) will be listed on court files. If pleadings or evidence are to be made public (following an accepted reasoned request) there will be a 14 day period during which parties can request redactions and provide redacted documents to be used for this purpose.

Further (and this is not new) material for which there has been redaction request shall not be made fully available to any applicant unless there is a successful access request – which request shall contain:

(a) details of the information alleged to be confidential, so far as possible;

(b) the grounds upon which the applicant believes the reasons for confidentiality should not be accepted; and

(c) the purpose for which the information is needed.

The Court will invite written comments from the parties prior to making any order and will allow the application unless legitimate reasons given by the party concerned for the confidentiality of the information “outweigh the interest of the applicant to access such information”.

Confidential information in pleadings and evidence – restrictions between parties including “confidentiality clubs” (new Rule 262A) 

• A party can apply to the Court for certain information in pleadings, or the collection and use of evidence in proceedings, to be restricted or prohibited or that access be restricted to specific persons.  The application needs to include the grounds on which the applicant believes the information or evidence should be restricted (in accordance with Article 58 of the UPC Agreement which provides that, in order to protect the trade secrets, personal data or other confidential information of a party to the proceedings or of a third party, or to prevent an abuse of evidence, the Court may order that the collection and use of evidence in proceedings before it be restricted or prohibited or that access to such evidence be restricted to specific persons).  The Court will consider in particular whether the grounds relied on by the applicant for the order “significantly outweigh” the interest of the other party in having full access to the information.
• The application needs to be lodged at the same time as lodging of the material and both redacted and unredacted versions must be provided. The Court can ask for written comment from other parties re this request.
• If application is for “confidentiality club” restricted access those in the “club” must be no greater than necessary in order to ensure compliance with the right of parties to an effective remedies and a fair trial and will include at least one natural person from each party and the respective lawyers or other representatives of those parties.

Video-conferencing of oral hearings allowed

• Additions in Rule 112.3 create the legal basis for the Court to conduct the whole oral hearing or parts thereof by videoconference if all parties agree or the Court considers it appropriate to do so in exceptional cases (likely to be travel restrictions or disproportionality eg: long journey for short and simple oral proceedings).
• Of its own volition, the Court can order any of the parties, representatives, accompanying persons, witnesses and experts to participate in the oral hearing by videoconference – includes simple attendance as well as being heard/giving evidence.
• In all cases, the oral hearing must be transmitted simultaneously in picture and sound to the court room – ie s that the public can watch it from the court room even if the proceedings are all on-line.
• Rule 104 – amends re aims of interim conference: Rule 104(h) is amended so that it reads: “It shall be also an aim of the interim conference to discuss with the parties if the oral hearing or a separate hearing of witnesses and experts shall be held wholly or partly by video conference” in order to ensure these video-conferencing issues are highlighted and confirmed at any early stage.

Lodging of documents: written pleadings must be signed before lodging and lodged electronically only (Rule 4)

• Written pleadings and other documents must be signed and lodged at the Registry or relevant sub-registry in electronic form and parties need to use of the official forms available online. The receipt of documents shall be confirmed by the automatic issue of an electronic receipt, which shall indicate the date and local time of receipt.
• Where it is not possible to lodge a document electronically for the reason that the electronic case management system of the Court has ceased to function, a party may lodge a document in hard-copy form at the Registry or a sub-registry- but an electronic copy of the document shall be lodged as soon as practicable thereafter.

Various amendments to allow notification of the defendant in ex parte applications (including Saisie)

• Amends have been made to allow for the Court to have discretion to notify the defendant on the making of ex parte applications for preliminary measures (Rule 209), and for preserving evidence (Rule 194 – Saisie). The Court must warn the applicant of its intention to notify the defendant and give the applicant the option to withdraw its application instead.
• In relation to the Saisie, there are also amends to allow the standing judge appointed to decide immediately on an application to preserve evidence and the procedure to be followed on the application (see Rule 194.4)

Judicial cooperation in the taking of evidence

• The rules on seeking cooperation from other courts in the taking of evidence have been updated to fit with the new EU regime that has come in since the last draft.
• Rule 173 states that judicial cooperation in the taking of evidence will be governed by:
  • recast Regulation (EU) 2020/1783 on taking evidence for courts of EU member states; and
  • for third countries, by the Hague Evidence Convention or other international agreements as they apply;  or where no such convention applies, then national law on the procedures to be followed for the judicial cooperation in the taking of evidence will be used.

Other changes – service, objection to judges, decisions by default, suspensive effect of appeals

• Service of documents – Changes have been made to align the Rules with new EU law rules on service.
• Provisions to allow objection to assigned judges – Rule 346 – This includes situations where there are perceived conflicts of interest or questions over judicial impartiality, although this must happen at an early stage of the proceedings. The assigned panel can continue the proceedings or stay them pending a decision on this.
• Decision by default – The approach to these has been clarified following discussions with the European Commission: not every failure to take a step within the time limit foreseen in the Rules or set by the Court results in a decision by default. the explanatory notes say that since such default judgments have far reaching consequences on the right of the defence of the defaulting party, “it is clarified that pursuant to this provision such decisions by default can only be given with due consideration to the overall procedural conduct of the defendant in that specific case. Unless there is evidence that the failure was only a mere oversight and happened accidentally a decision by default can be given”.
• Rule 223: No suspensive effect of certain appeals – This applies to appeals
  • against procedural decisions requiring leave of the Court of First Instance under Rule 220.2;
  • for any “discretionary review” of such decision by the Court of Appeal; nor
  • for costs appeals under Rule 221.3.

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