Following the adoption of the two Regulations on the EU patent and on related translation arrangements on 17th December 2012 and the signing of the Unified Patent Court Agreement on 19th February 2013, factual and other legal grounds must now be prepared in order to enable the Unified Patent Court to com- mence work after the Agreement comes into effect.

The "Regulation implementing enhanced coop- eration in the area of the creation of unitary patent protection"² was approved by the European Parliament on 12th December 2012 and the Council on the 17th December 2012. On 17th December, the corresponding translation arrange- ments regulation³ was approved by the Council. On 19th February 2013, 24 of the 27 member states of the European Union signed the Agreement on a Unified Patent Court.^4,5 Bulgaria joined the Agreement shortly after becoming the 25th signatory state. The Agreement will enter into force on 1st January 2014 or four months after ratification or accession by at least 13 signatory states, which must include the three signatory states with the highest number of European patents in the year before the Agreement was signed, that is: Germany, France and the United Kingdom.

According to a joint statement by the signatory states given as a statement in the minutes on the occasion of the signing of the Agreement,⁶ the time between the signing of the Agreement and its coming into force is to be used to create or prepare all practical arrangements for the Unified Patent Court. To this end, the signatory states intend to set up a Preparatory Committee. The Preparatory Committee shall prepare the practical arrangements and set out a roadmap for the early establishment and coming into operation of the Unified Patent Court. It may establish subgroups, as appropriate, and make use of teams of experts.⁷

In addition to organising, in particular, the training of future judges, preparing the budget of the Unified Patent Court for the first financial year, making proposals for setting up the divisions of the Court of First Instance and the Court of Appeal, the Administrative Committee and the Budget Committee, preparing the election of members of the Advisory Committee and the judges and recruiting administrative staff, the Preparatory Committee shall also be tasked with preparing the Rules of Procedure⁸ for the Unified Patent Court.⁹

The signatory states recall the importance of appropriate Rules of Procedure for the Unified Patent Court and of their uniform application, which are vital to guarantee that the decisions of the Court are of the highest quality and that proceedings are organised in the most efficient and cost effective manner. They affirm their willingness to draw up a complete and detailed set of Rules of Procedure before the entry into force of the Agreement. The Preparatory Committee shall complete a first draft of Rules of Procedure on the basis of the input of expert judges, lawyers and industry representatives within three months. This draft should be the basis of a broad consultation with stakeholders before it is finalised with a view to reaching final Agreement before the end of the ratification process. The adoption of the Rules of Procedure by the Administrative Committee should be preceded by a consultation with the European Commission on their compatibility with Union Law.¹⁰ The final adoption of the Rules of Procedure is the responsibility of the Administrative Committee,¹¹ in which every signatory state is represented.¹² The adoption of decisions requires a majority of three quarters of the Contracting Member States.¹³

The Preparatory Committee will be able to refer to a previous draft when preparing the Rules of Procedure, which are to be completed within three months according to the statement in the minutes for a broad consultation. This previous draft was developed successively by two working groups with the participation of the Commission, several Council Presidencies, industry representatives and representatives of stakeholders. This draft is the preliminary set of provisions for the Rules of Procedure of the Unified Patent Court,¹⁴ which is currently in its 14th version.

The first draft was developed in the first half of 2009 by the Commission as a working paper and discussed with the members of a working group of experts¹⁵ and industry representatives in two working sessions. The model for this was the provisions of the European Patent Convention, the European Court of Justice's¹⁶ Rules of Procedure, those of the European Court of First Instance¹⁷ and of the Civil Service Tribunal of the European Union, Jan Willems' "Third Proposal for an EPLP"^18,19 and the Second Venice Resolution of the European Patent Judges.²⁰

The need to develop a preliminary draft of the Rules of Procedure for the Unified Patent Court arose after the Commission, in agreement with the European Council,²¹ resumed looking for a solution for a community patent and for unified Europe-wide patent jurisdiction on 3rd April 2007 with the communication, "Enhancing the patent system in Europe."²²

The drafts of an agreement on a European and Community Patent Court developed after this by successive presidencies in cooperation with the Commission also expressly provided for Rules of Procedure.

There were three further drafts between then and October 2009, which were discussed with the above group of experts, the Council Working Group or the participants of the 5th European Patent Judges' Forum in Venice.²³ After this, work on the preliminary draft of the Rules of Procedure was adapted to the EC Treaty provisions with regard to the request made by the Council to the European Court of Justice for an opinion on 6th July 2009 pursuant to Article 218 (11) of the Treaty on the functioning of the European Union concerning the compatibility of the planned Agreement on creating a Unified Patent Court.

The European Court of Justice published its opinion on 8th March 2011, in which it concluded that the planned Agreement was not compatible with the provisions of the EC Treaty and the Treaty on the Functioning of the European Union. A deciding factor was the consideration that if a decision of the planned European and Community Patents Court were to be in breach of European Union law, that decision could not be the subject of infringement proceedings nor could it give rise to any financial liability on the part of one or more Member States. Consequently, an international court outside the institutional and judicial framework of the European Union would be created.²⁴

On the 10th March 2011, the Council adopted a Decision authorising enhanced cooperation.²⁵ This was followed by the Council Presidency's²⁶ proposals on 23rd June 2011 for a Regulation regarding the creation of unitary patent protection and a corresponding Regulation regarding translation. The Council of Ministers joined this with a "General Approach" on 27th June 2011. This was followed by an intensive and sometimes controversial discussion²⁷ between the Council, the Commission and the Parliament, which came to a mutual conclusion with the acceptance of both Regulations on 12th and 17th December 2012.²⁸

In parallel²⁹ to the preparation of the Regulations, work on creating a Unified Patent Court proceeded. This work was able to build on the draft Agreement, which had been submitted to the European Court of Justice for an Opinion and on the Conclusions of the Competitiveness Council of 4th December 2009, in which agreement over important elements of the future court had been reached.³⁰ They did, however, have to take the Court's objections in its Opinion into account. This was done through a draft that the General Secretariat of the Council submitted to the Mertens Group on 14th June 2011.³¹ The draft contained an Agreement on a Unified Patent Court, a Statute of this Court and a list of issues to be included in the Rules of Procedure. The draft has subsequently been further developed.³² However, a consent could not be reached on the Agreement during the Polish Presidency of the EU Council by the end of 2011 because individual issues³³ were still being discussed with much controversy.

To avoid further delaying work on the preliminary set of provisions for the Rules of Procedure, a 5th draft from the Commission was discussed with members of the experts group, representatives of the Danish presidency and industry representatives on 3rd February 2011. It was concluded that the Rule of Procedure still needed considerably more work. It was considered appropriate for a small working group of judges and lawyers with experience in patent litigation to deal with this.³⁴ Following on from this, this working group held three working meetings, at which representatives of the Danish Presidency and the Commission also participated, and submitted further drafts. On the basis of the 8th draft of the preliminary set of provisions for the Rules of Procedure, an initial informal consultation was held, in which representatives of industry and medium-sized business, judges, lawyers and patent lawyers participated.³⁵ The results of the consultation were taken into account in the 9th draft. Additionally, the Rules of Procedure were completed in special fields such as service of process and legal aid. Further drafts followed after the summer break, the last being the 14th draft. The working group believes that the 14th draft is suitable as the basis for a broad public consultation on the creation of Rules of Procedure for the Unified Patent Court.³⁶

1. Preamble and General Rules for the Application and Interpretation of the Rules of Procedure

The Rules of Procedure serve to regulate procedure at the Unified Patent Court (court, UPC) in detail.³⁸

Accordingly, their application and interpretation must be in accordance with the Agreement and the Statute of the court,³⁹which means that in the event of a conflict, the provisions of the Agreement and Statute shall prevail over those of the Rules of Procedure.⁴⁰ According to the Agreement, the Rules of Procedure shall guarantee that the decisions of the court are of the highest quality and that proceedings are organised in the most efficient and cost effective manner. They shall ensure a fair balance between the legitimate interests of all parties. They shall provide for the required level of discretion of judges without impairing the predictability of proceedings for the parties.⁴¹ Due consideration should be given to the importance and complexity of the case in terms of how proceedings are carried out. It should be ensured that the rules, procedures and remedies provided for in the Agreement are used in a fair and equitable manner and do not distort competition.⁴²

The guiding principles of proportionality, flexibility, fairness and justice are also incorporated into the preamble of the Rules of Procedure. Proceedings shall be conducted in a way which will normally allow the final oral hearing to take place within one year whilst recognising that more complex cases may require longer proceedings and more simple cases shorter proceedings. This not only obliges the court to manage cases in accordance with these objectives, but also obliges the parties to cooperate with the court and above all, to set out their full case as early as possible in the proceedings, which written procedure helps, as will be described in further detail below.⁴³

General provisions on the application and interpretation of the Rules of Procedure are found in the provisions following the preamble. This relates to the inclusion of Protection Certificates in the Rules of Procedure, the lodging of written pleadings and other documents in electronic format, the lodging of an application to opt out and withdrawal of an opt out, the service of written pleadings, decisions and other documents, the language of written pleadings (generally the language of the proceedings), the party's representative, and the powers of the court.⁴⁴

2. Procedures Before the Court of First Instance

Proceedings before the Court of First Instance consist of a written procedure, an interim procedure, an oral procedure, a procedure for the determination of damages and compensation, and a procedure for cost order.⁴⁵

At any stage of the proceedings, the court may propose that the parties make use of the facilities of the Patent Mediation and Arbitration Centre.⁴⁶ That does not, however, exclude the possibility of the court and, in particular, the judge-rapporteur exploring the possibility of a comparable settlement during the interim procedure.⁴⁷

a) The Written Procedure

The written procedure provides first in detail for infringement actions including counterclaims for revocation. There are then rules for the written procedure for:

• Revocation actions,
• Actions for declaration of non-infringement,
• Infringement actions, where revocation actions or actions for declaration of non-infringement are pending,
• Actions for compensation for licences as per Article 11 of the Regulation, and
• Actions against decisions of the European Patent Office as per Article 12 of the Regulation.

To avoid repetition, in the Rules of Procedure, the rules for the written procedure for infringement actions are referred to as much as possible for the other actions. For infringement actions, two written statements from the plaintiff and two from the defendant are generally provided for in the written procedure:

• The Statement of claim,⁴⁸
• The Statement of defence,⁴⁹ where necessary with a Counterclaim for revocation⁵⁰ and, where necessary, prior to this a preliminary objection concerning the jurisdiction and competence of the court or the division indicated by the plaintiff or the language of the Statement of claim,⁵¹
• The Reply to the Statement of Defence,⁵² where necessary with a Defence to the Counterclaim for revocation and a request to amend the patent including, where appropriate, auxiliary requests,⁵³ and
• The Rejoinder to the Reply,⁵⁴ where necessary with a Reply to the Defence to the Counterclaim for revocation and a response to the limited defence of the patent.⁵⁵

Following the exchange of written pleadings, the judge-rapporteur shall inform the parties of the closure of the written procedure and where necessary, of the date set for the interim conference.⁵⁶ The judgerapporteur can allow further written pleadings at the parties' request before the closure of the written procedure.⁵⁷ To ensure the procedures are efficient however, this can only be considered in exceptional circumstances.

Each party can request that a technically-qualified judge, with qualifications and experience in the field of technology, be allocated by the President of the Court of First Instance to the panel of three legally qualified judges, which makes up every panel of a local or regional division.^{58, 59} The Application is to be made in writing as quickly as possible. An Application lodged after the closure of the written procedure shall only be granted if justified in view of changed circumstances, such as new submissions presented by the other party and accepted by the Court.⁶⁰ The judge-rapporteur can also request that the President of the Court of First Instance allocates a technically qualified judge after having consulted the presiding judge and the parties during the written procedure.⁶¹

The rules on the written procedure contain concrete guidelines on the content of the written statements. In addition to formal requirements, in the written statements, parties are obliged above all to formulate applications and to submit fully all information pertaining to the facts, evidence and the legal evaluation.⁶² Furthermore, where a Counterclaim for revocation is made, the patent holder (plaintiff or third defendant⁶³) can only defend the patent to a limited extent with the Statement of defence without permission; any subsequent requests to amend the patent require the permission of the Court.⁶⁴ This all serves to limit the length of the proceedings by avoiding delays by withholding the submission of relevant information (piecemeal strategy), and therefore the oral procedure is relieved to a large extent of new submissions.

The Statement of Claim is to be made in the language of the proceedings.⁶⁵ If the action is filed at a local or regional division, this is the language or one of the languages of that division.⁶⁶ If the action is filed to the central division, for example because the signatory state, in which the infringing act occurred neither has a local division nor participates in a regional division and therefore the central division also has jurisdiction for infringement actions,⁶⁷ the Statement of Claim is to be submitted in the language in which the patent was granted.⁶⁸ If the parties have agreed to the language beforehand,⁶⁹ the Statement of Claim can be submitted in this language even when filing an action at a local or regional division.

The infringement action and the Counterclaim for Revocation shall not be deemed to have been lodged until the court fees have been paid.⁷⁰ The court fees are still to be established by the Administrative Committee.⁷¹ A fixed fee will be given that will be increased depending on the value of the dispute. The court fees shall be fixed at such a level as to ensure both the principle of fair access to justice, in particular for parties with less financial means and the objective of a self-financing court.⁷² Natural persons can, depending on their need and the likely success of their action, apply for legal aid.⁷³ Targeted support measures for small and medium-sized enterprises and micro entities may be considered.⁷⁴ In this respect, in future legislative procedures, a rule on adjusting allocations of costs such as that in Germany's Patent Law, could be considered.

The parties' written statements are subject to deadlines. The Statement of Defence and, where necessary, the Counterclaim for revocation shall be lodged within three months of service of the Statement of claim.⁷⁵ The Reply and the Defence to the Counterclaim for revocation must be lodged within two months of service of the Statement of Defence.⁷⁶ The Rejoinder and the Reply to the Defence to the Counterclaim within a month of the Reply being lodged.⁷⁷ This means, by adding together six weeks for lodging the Statement of Claim and, where necessary, a further six weeks for lodging the Counterclaim for revocation to the patent holder, where this is not the plaintiff as a third defendant, the written procedure should, as a rule, last between eight and nine months.⁷⁸ However, the periods for lodging written pleadings may be extended by the judge-rapporteur on request.⁷⁹ This too, however, should only occur in exceptional circumstances; for example, in the case of patents that are particularly technically complex, in order to avoid delays to the proceedings.

The judge-rapporteur shall decide the preliminary objection concerning the jurisdiction of the Court or the division indicated by the plaintiff or incorrectly selected language of the Statement of Claim.⁸⁰ He may choose, at his discretion, whether he decides the preliminary objection after having heard the opposing arguments or leaves it to the division to give an opinion on this issue in the reasons in the final decision.⁸¹ An appeal against a rapporteur's decision may only be lodged with the permission of the judge-rapporteur.⁸² If an appeal is lodged, first instance proceedings may be stayed by the judge-rapporteur or the Court of Appeal following a request by a party.⁸³

If a Counterclaim for revocation was lodged, the court must decide as soon as possible after the conclusion of the written procedure, as per Article 33 (3) of the Agreement, whether the proceedings should continue with the infringement action and the counterclaim; the counterclaim should be referred to the central division and suspend or proceed with the action for infringement; or refer the case for decision to the central division. The parties shall have the opportunity beforehand, to give their opinion on this issue, as will the plaintiff in the counterclaim for revocation and the defendant to the counterclaim for revocation in his defence to the counterclaim.⁸⁵ If the panel decides to proceed with both the action for infringement and with the counterclaim for revocation, the judge-rapporteur must request that the President of the Court of First Instance allocate a technically qualified judge if one was not allocated at the request of one of the parties or the rapporteur.⁸⁶ If the division refers the counterclaim for revocation to the central division, a decision must be made as to whether the infringement proceedings should be suspended until a decision regarding revocation is made. This shall be at the division's discretion, unless the counterclaim for revocation has a high probability of success. Then the infringement proceedings should be suspended.⁸⁷

If an action for revocation is already pending before the central division, the infringement action can be lodged before the central division instead of before the competent local or regional division as per Article 33 (1) of the Agreement. If the infringement action is lodged before a competent local or regional division, unless otherwise agreed by the parties, the President of the Court of First Instance shall require the panel appointed in the central division to hear the revocation action, to stay all further proceedings in the revocation action pending a decision of the panel at the local or regional division hearing the action for infringement pursuant to Article 33 (3) of the Agreement. ⁸⁸ How far the revocation action in the central division was advanced prior to the stay must be taken into consideration.⁸⁹ If the defendant in the infringement proceedings does not lodge a counterclaim for revocation with the three-month period in Rule 23 of the Rules of Procedure, or if he/she waives the lodging of a counterclaim for revocation before the end of this period, the revocation action must not be suspended or a stay that has already been arranged, must be lifted.⁹⁰

An action for declaration of non-infringement⁹¹ pending before the central division⁹² shall be stayed once an infringement action between the same parties⁹³ or between the holder of an exclusive licence and the party requesting a declaration of non-infringement relating to the same patent is brought before a local or regional division within three months of the date on which the action was initiated before the central division. This has no consequences for the infringement proceedings. If the infringement action is lodged only after the end of the three months, the action for declaration of non-infringement shall not automatically be stayed. Rather, the presiding judges of the central division and the local or regional division concerned shall consult to agree on the future progress of proceedings, including the possibility of a stay of one of the two parallel proceedings.⁹⁴

Sentence 2 of Article 33 (2) of the Agreement sets forth that if an action is pending before a regional division and the infringement occurs in the territories of three or more regional divisions, the regional division concerned shall, at the request of the defendant, refer the case to the central division. According to the clear terms and historical development⁹⁶ of the regulation, this provision does not apply to local divisions. Until what stage in an ongoing procedure before a regional division such a request can be made, is still to be established in the Rules of Procedure. Even if the request for referral to the central division should be subject to certain deadlines, it can already be noted that it seems unattractive to the plaintiff, to lodge an infringement action with a regional division at all if there is the possibility that the defendant will request referral to the central division in the course of the ongoing procedure and can significantly delay the procedure in so doing. The above poses the question as to whether it makes sense for signatory states to participate in a regional division, which seems unattractive to plaintiffs because proceedings are subject to a significant risk of delays compared to proceedings before local divisions.⁹⁷

b) The Interim Procedure

The interim procedure does not have a model in the national procedural law of the participating member states. The idea of having an additional procedural step between the written procedure and the oral procedure, was first developed in the Second Venice Resolution of the European Patent judges.⁹⁸ The main purpose of the interim procedure is to prepare the oral proceedings and/or to arrange a settlement (rendering the oral proceedings redundant).⁹⁹ The range of obligations, which come into question, is broad.¹⁰⁰ In concrete terms, it can, for example, pertain to obtaining the opinion of a court expert and summoning the expert to appear at the oral procedure. Additionally, witnesses can be summoned to the division for the oral procedure. Orders regarding the submission of evidence under Article 59 of the Agreement;¹⁰¹ regarding preserving evidence and inspections under Article 60 of the Agreement¹⁰³; regarding carrying out experiments¹⁰⁴ or issuing letters rogatory to other courts or authorities¹⁰⁵ are also possible. Additionally, the possibilities of a settlement or carrying out a mediation or arbitration at the Centre for Mediation and Arbitration may be explored. The judge-rapporteur shall summon the parties to the oral hearing which shall take place before the panel.¹⁰⁶

If agreed, one or several dates can be set for the interim procedure.¹⁰⁷ The interim procedure may also not occur,¹⁰⁸ for example where the facts are clear and no further clarification is needed and the parties have not shown any readiness to come to a settlement.

The interim procedure is held subject to the mandate of the whole panel before the judge-rapporteur.¹⁰⁹ The judge-rapporteur makes the necessary orders and directs the interim procedure. The judge-rapporteur may refer any matter to the panel for decision and the panel may review any decision or order of the judge-rapporteur. Any party may request that a decision or order of the judge-rapporteur be referred to the panel.¹¹⁰ Such a request shall not have suspensive effect,¹¹¹ so this cannot be used to delay the interim procedure.

The interim conference may be held by telephone conference or by video conference.¹¹² If it is held in court, it shall be open to the public and shall be recorded. The recording shall be made publicly available, unless, after hearing the parties, the judgerapporteur orders that the proceedings or parts thereof are not to be recorded,¹¹³ which can be of use in particular in settlement negotiations.

The interim procedure should, as a rule, not last longer than three months.¹¹⁴ If, for example, after consultation with the parties, after submission of evidence, after preservation of evidence or after an inspection, new facts arise or if the written opinion of a court expert is taken down, there will still be opportunity for the parties to give an opinion at the oral hearing.

c) Oral Procedure

Following the end of the interim procedure, the management of the case shall be passed from the judge-rapporteur to the presiding judge.¹¹⁵ The oral hearing shall be held before the panel (three legally qualified judges, and if necessary, an additional technically qualified judge) and shall be directed by the presiding judge (one of the legally-qualified judges¹¹⁶). The oral hearing consists of the hearing of the parties' oral submissions and, where necessary, the hearing of witnesses and experts.¹¹⁷ The presiding judge and (or) the judges of the panel may provide a preliminary introduction to the case and put questions to the parties, to the parties' representatives and to any witnesses or experts. The parties may also put questions to the witnesses or experts.

The presiding judge may prohibit any question which is not relevant.¹¹⁸

The duration of the oral hearing should as a rule not be longer than a day; a longer duration or an additional date for the hearing is not precluded where the complexity of the case requires it.¹¹⁹ Time limits for parties' oral submissions may be set in advance of the oral hearing. The parties' oral submissions can also be limited during the hearing if the judges are sufficiently informed. Separate dates before the panel to hear witnesses are possible. The proceedings are open to the public unless there is a particular reason for the entire proceedings or part thereof to be made confidential.¹²⁰ The hearing is generally recorded. After having heard the parties, the court can order that the proceedings shall not be recorded.¹²¹

If the action is successful, on request of the plaintiff, the court may grant an injunction against the defendant under Article 63; may order that corrective measures be taken under Article 64,¹²² may order the communication of information under Article 67, may publish the decisions under Article 80, may order the defendant to pay damages under Article 68 and compensation under Article 32 (1) (f) of the Agreement. If the claim, as is the case in German courts, is only intended to establish the obligation to pay damages and compensation, this should be ordered accordingly and the corresponding action for an amount can be lodged in separate proceedings. Alternatively, the amount of the damages and the compensation may be claimed in the same proceedings.¹²³ The court may subject any order or measure to a security for the case where the decision is subsequently reversed.¹²⁴ The court also decides the costs under Article 69 of the Agreement.

Exceptionally, the court can refrain from ordering in particular the injunction and the corrective measures if the conditions in Article 12 of the Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights,¹²⁵ which are incorporated into the Rules of Procedure,¹²⁶ are met.

If the local or regional division referred the Counterclaim for revocation to the central division under Article 33 (3) (b) of the Agreement or if the patent is also the subject of an opposition procedure or opposition appeal procedure and the local or regional division concludes that an infringement has occurred, it may render its decision on the merits or suspend the proceedings. If the court renders its decision on the merits, this is under the condition (subsequent) that the patent is not held to be wholly or partially invalid by the final decision in the revocation procedure or a final decision of the European Patent Office. ¹²⁷ Suspension can occur pending a final decision in the revocation procedure or a final decision of the European Patent Office. The local or regional division must suspend the infringement proceedings if it is of the view that there is a high likelihood that the relevant claims regarding the patent(s) will be held to be invalid by the final decision in the revocation procedure or of the European Patent Office.¹²⁸ In a parallel revocation procedure, the suspension should occur until the central division's decision regarding the revocation claim. If the patent is declared invalid and the patent holder goes to appeal, the infringement proceedings should remain suspended. If the revocation claim is rejected—contrary to the local or regional division's prognosis, this should as a rule lead to the infringement proceedings resuming.

If the local or regional division adopted a favourable decision on the merits and the central division, the court of appeal or the European Patent Office subsequently revokes the patent, the infringement defendant can demand compensation for damages incurred through the enforcement of the infringement verdict.¹²⁹ The enforceability of the decision depends in addition to a security, if ordered,¹³⁰ on whether the plaintiff has notified the court as to which part of the orders he intends to enforce and said notice has been served on the defendant by the Registry.¹³¹

The court shall give the decision on the merits as soon as possible after the closure of the oral hearing, and shall strive to do this within a time period of six weeks. In exceptional cases, it is possible for the court to give its decision immediately after the closure of the oral hearing.¹³²

d) Procedure for the Determination of Damages and Compensation

After infringement of a patent has been established, the amount of damages can be decided as part of the infringement proceedings or in separate proceedings. The period for lodging a separate claim for damages and compensation is one year from service of the final decision on the infringement and the validity of the patent.¹³³ The Application for the determination of damages must contain, among other things, which of the three calculation methods for establishing damages established in the Enforcement Directive (lost profits, any unfair profits made by the infringer or the licence analogy method) to be used and how this is calculated in detail based on the facts provided by the plaintiff.¹³⁴ The Application for the determination of damages can be linked to a request for an order to lay open the defendant's books, which the judge-rapporteur must decide in advance after hearing the defendant if the defendant has not already acknowledged the Application.¹³⁵

After filling in the Application document, the content of which may be added to where necessary following the laying open of books because of the knowledge gained from them,¹³⁶ the defendant's Defence and the plaintiff's Reply corresponding to the written procedure of the infringement proceedings, follow, which is followed mutatis mutandi by the interim procedure and the oral procedure.¹³⁷ A preliminary award of damages, which should in any case cover the anticipated court fees for the procedure for the determination of damages and compensation, is available.¹³⁸ The procedure for the determination of damages and compensation may be stayed pending an appeal in the infringement proceedings.¹³⁹

e) Procedure for Cost Order

A cost order may be the subject of separate proceedings following a decision on the merits and, if applicable, a decision for the determination of damages. ¹⁴⁰ An interim award of costs in the decision on the merits or in a decision for the determination of damages is possible.¹⁴¹ The Application for a cost order must be lodged by the successful party within one month of service of the decision. This shall contain particulars regarding the costs for which compensation is requested.¹⁴² The procedure shall occur (solely) before the judge-rapporteur who shall allow the unsuccessful party an opportunity to comment in writing. ¹⁴³ The judge-rapporteur decides in writing on the costs in accordance with the principles in Article 69 of the Agreement and the corresponding rules in the Rules of Procedure.¹⁴⁴ The Administrative Committee shall adopt a table of recoverable costs by reference to the value of the dispute. The scale may be adjusted from time to time.¹⁴⁵ The decision regarding costs may be appealed in the Court of Appeal.¹⁴⁶

The Agreement states that the means of giving or obtaining evidence shall include in particular: hearing the parties, requests for information, production of documents, hearing witnesses, opinions by experts, inspections, comparative tests or experiments and sworn statements in writing (affidavits).¹⁴⁷ As the list is not final, other means of giving or obtaining evidence are also possible.

Witness evidence may initially be lodged in writing, where it must be clear from the written statement that the witness is aware of his obligation to tell the truth and his liability under applicable national law.¹⁴⁸ If the party cannot obtain a written witness statement, it can make an Application for the hearing of a witness.¹⁴⁹ The court can order the hearing of a witness if the written witness statement is challenged by the other party or an application for the hearing of a witness is made because a written statement was not obtainable.¹⁵⁰

The hearing of a witness in the oral procedure begins with a declaration from the witness stating that the evidence he/she gives shall be the truth.¹⁵¹ If the witness previously made a written witness statement, this shall then be heard.¹⁵² The presiding judge and the other judges can ask the witness questions.¹⁵³ The parties may also put questions to the witness. The hearing of witnesses and experts is subject to the control of the presiding judge and should be limited to that which is necessary.¹⁵⁴ The hearing of a witness can also occur via electronic means (e.g. video conference).¹⁵⁵ A witness who has been duly summoned is obliged to appear before the division and to give testimony. This is, however, only the case where the witness cannot claim exemption to give testimony.¹⁵⁶ Should the witness fail to fulfil his obligation to appear before court or to testify, the division may impose a pecuniary sanction upon him. A further summons, now at the witness' own expense, is available. Additionally, a letter rogatory may be sent to the competent national court.¹⁵⁷

Expert evidence may be provided as an expert's report from experts of the parties¹⁵⁸ or from experts appointed by the court.¹⁵⁹ To obtain an opinion from a court expert, an order is required, which contains, among other things, the questions put to the expert, which the expert is to answer in his report.¹⁶⁰ The court expert must then create a written report that is communicated to the parties with an invitation to submit observations.¹⁶¹ The court expert should additionally be present at the oral hearing and answer questions put to him/her by the court and parties where required.¹⁶² The hearing of a court expert without a written report first being written should also be admissible subject to an order of the court.

The order to produce evidence comes into question upon request from a party, where this party has presented all reasonably available evidence sufficient to support its claims and has, in substantiating those claims, specified evidence which lies in the control of the other party or a third party.¹⁶³ The request is to be made during the written procedure or in the interim procedure.¹⁶⁴ After the request has been made, the court must first hear the other/third party and take their interests into account when making an order.¹⁶⁵ In particular, such an order shall not result in an obligation of self-incrimination on the other or a third party.¹⁶⁶ The court can make orders to protect confidential information.¹⁶⁷ If a party does not observe an order to produce evidence, the court shall take this into consideration when making its decision on the merits.¹⁶⁸ In accordance with the conditions for the order to produce evidence, at the request of a party, the communication of banking, financial or commercial documents under the control of the opposing party may be ordered.¹⁶⁹

The order to preserve evidence and to inspect premises can be requested before or during the main proceedings. If the main proceedings are already pending, the Application should be lodged at the division where the applicant has commenced infringement proceedings on the merits, otherwise it should be lodged at the division where the applicant intends to start proceedings on the merits—if permitted.¹⁷¹ A decision can be made regarding the application after the defendant has been given the opportunity to lodge a written statement¹⁷² or on request of the applicant, without having first heard the defendant. An oral hearing with the parties or solely with the applicant can be held.¹⁷³ The order to preserve evidence without first hearing the defendant is particularly considered where any delay is likely to cause irreparable harm or where there is a demonstrable risk that evidence will be destroyed.¹⁷⁴

Where main proceedings on the merits of the case are already pending, the proceedings and the Application for preserving evidence shall be dealt with by the judge-rapporteur of these proceedings.¹⁷⁵ If the main proceedings on the merits of the case are not yet pending, the presiding judge decides which individual judge (the presiding judge himself, a judgerapporteur designated by him¹⁷⁶ or a single judge¹⁷⁷) shall decide on the application to preserve evidence.¹⁷⁸ In particularly urgent cases, the application to preserve evidence can be made informally directly to the standing judge.^179,180

The court may order the following: preserving evidence by detailed description, with or without the taking of samples; the physical seizure of (allegedly) infringing goods; physical seizure of the materials and implements used in the production and/or distribution of these goods and any related document.¹⁸¹ Inspection by a person appointed by the court, for example by an expert nominated by the court¹⁸² can be ordered.¹⁸³ For all measures, the confidential information must be protected.¹⁸⁴ In particular, the applicant shall not be present at the inspection of the premises. The applicant can however be represented by an independent professional practitioner whose name has to be specified in the court's order.¹⁸⁵ This can, for example, be the applicant's lawyer or patent lawyer. Additionally, the court may order that the information resulting from the inspection should only be disclosed to named persons subject to terms of non-disclosure.¹⁸⁶

Where measures to preserve evidence or inspect premises occur without the other party in the case having been heard, this party may request a review of the order. After an oral hearing, the court decides whether the measures are to be modified, revoked or confirmed.¹⁸⁷ The measures to be ordered when revocation occurs depend on the type of preservation of evidence. For example, if the court revokes an order to seize (allegedly) infringing goods, this can be reversed by returning the goods to the defendant. In contrast, if the order to inspect a production line has already been followed, it can no longer be reversed. If the people present at the inspection were bound to non-disclosure, the court may, however, order the obligation to non-disclosure to be maintained.

Finally, the Rules of Procedure also contains rules on freezing orders,¹⁸⁸ on experiments ordered by the court¹⁸⁹ and on letters rogatory.¹⁹⁰

An application for provisional and protective measures can be lodged before or during the main proceedings on the merits.¹⁹¹ The procedure is divided into a written and an oral procedure, where it is up to the discretion of the court whether this includes an oral hearing.¹⁹² Where main proceedings on the merits of the case have already been started before the court, the Application for provisional measures shall immediately be forwarded to the panel or the single judge to which the case has been assigned. Otherwise, the presiding judge of the panel to which the case has been assigned shall designate the judgerapporteur. ¹⁹³ In urgent cases, the presiding judge may decide that he (instead of the panel) or the judge-rapporteur may decide on the Application with a reduced timetable.¹⁹⁴ In cases of extreme urgency (e.g. injunctions or seizures related to a trade fair), the standing judge¹⁹⁵ can decide immediately on the Application.¹⁹⁶

Where the applicant makes a reasoned request,¹⁹⁷ the court may order provisional measures without the defendant having been heard in cases where any delay caused by this is likely to cause irreparable harm to the applicant.¹⁹⁸ Where a provisional or protective measure is ordered without the defendant having been heard, a review shall be effected by the court at the defendant's request in an oral procedure.¹⁹⁹

Otherwise, the court can give the defendant the opportunity to lodge a written opinion and/or summon the parties to an oral hearing. The court can also summon solely the applicant to an oral hearing. This may only be considered in exceptional circumstances. ²⁰⁰ If the defendant filed a protective letter,²⁰¹ this must be presented to the court and its content must be taken into account in the court's decision. If the applicant has applied for provisional measures without hearing the defendant and the court decides not to grant provisional measures, the applicant may withdraw the Application and may request that the court order that the Application for provisional measures or protective measures remains confidential.²⁰²

If the court concludes not to decide without an oral hearing on the matter, the court should decide a date for this as soon as possible. It can make preparatory instructions, such as ordering the parties to provide additional information, documents or other evidence. The general rules of the Rules of Procedure for the oral hearing in the main proceedings shall apply according to the demands of the summary proceedings.²⁰³

The court may, by way of order, grant injunctions or order the seizure and/or surrender of the products suspected of infringing a patent so as to prevent their entry into, or movement, within the channels of commerce. The court may also order the precautionary seizure of the movable and immovable property of the alleged infringer, including the blocking of his/ her bank accounts and the seizure of other assets if the applicant demonstrates circumstances likely to endanger the recovery of damages.²⁰⁴ The court should only make the above orders if it is satisfied with a sufficient degree of certainty that the applicant is entitled to commence proceedings,²⁰⁵ that the patent in question is valid and that his right is being infringed, or that such infringement is imminent.²⁰⁶ The court can make the enforceability of a decision dependent on the provision of adequate security by the applicant. The court must order the provision of an adequate security if the provisional measure is ordered without hearing the defendant.²⁰⁷

An unsuccessful party may bring an appeal against a decision of the Court of First Instance before the Court of Appeal within two months.²⁰⁸ Appeals can additionally be brought against orders of the Court of First Instance. A distinction is made between the orders referred to in Articles 49 (5),²⁰⁹ 59 to 62 and 67²¹⁰ of the Agreement and other (procedural) orders. ²¹¹ For the former, the admissibility of the appeal is subject to it being submitted within 15 calendar days of the notification of the order to the applicant.²¹² For the latter, the Court of First Instance must also grant leave to appeal.²¹³ Without leave to appeal, an appeal against an order can only be submitted with the appeal against the decision,²¹⁴ where a period of two months for submitting the appeal shall apply. An appeal can also be submitted against a decision on costs under Article 69 of the Agreement with leave of the Court of First Instance (here: the judgerapporteur) ²¹⁵ or the Court of Appeal.²¹⁶

The appeal does not have any suspensive effect. A party may, however, lodge an Application for suspensive effect to the Court of Appeal.²¹⁷ The court shall make a decision regarding the Application without delay. In cases of extreme urgency, it can be made immediately by the standing judge.²¹⁸ Evident wrong decisions by the divisions of the Court of First Instance can, therefore, be corrected in the short-term by the Court of Appeal by removing the effects until a decision regarding the appeal. Appeals against claims or Counterclaims for revocation always have suspensive effects.²¹⁹

The appeal may be based on points of law and matters of fact.²²⁰ Requests, facts and evidence, which have not been submitted by a party during proceedings before the Court of First Instance, may be disregarded by the Court of Appeal. When exercising discretion, the Court of Appeal shall in particular take into account whether the affected party is able to justify that the new submissions could not have been made during proceedings before the Court of First Instance; whether the new submissions are highly relevant for the decision on the appeal and the position of the other party regarding the lodging of the new submissions.²²¹ Based on this, the Appeal against the dismissal of the Counterclaim for revocation by the Court of First Instance should generally not be able to be based on prior publications, which, like for example patent applications, patent specifications or Articles in specialist journals, could have been submitted to the Court of First Instance because they were already readily accessible then, unless the defendant in the Revocation claim states that he/she agrees.

A distinction is to be made between the Statement of appeal²²² and the Statement of grounds of appeal.²²³ For an appeal against a final decision, the Statement of grounds of appeal is to be lodged within four months of service of a decision.²²⁴ For an order, the Statement of grounds of appeal is to be lodged within 15 calendar days.²²⁵ If the appeal against an order is lodged with the appeal against a decision, the time period of four months for submitting the grounds also applies to the appeal against an order. The Statement of grounds of appeal shall contain an indication of which parts of the decision of the Court of First Instance are contested, the reasons for setting aside the contested decision and an indication of the facts and evidence on which the appeal is based.²²⁶

The language of proceedings before the Court of Appeal is the language of proceedings before the Court of First Instance, unless the parties agree that the language of proceedings should be the language in which the patent was granted or the Court of Appeal decides, subject to Agreement of the parties, that another official language of a Contracting Member State should be used as the language of proceedings.²²⁷

As with the First Instance procedure, the President of the Court of Appeal shall assign the case to a panel.²²⁸ The presiding judge shall designate a judge from the panel as the judge-rapporteur.²²⁹ The judge-rapporteur shall examine whether the Statement of appeal satisfies the previously mentioned requirements regarding content and shall inform the appellant where necessary of any deficiencies. If the appellant fails to amend the Statement of grounds of appeal correspondingly within a fixed period, the Court of Appeal may reject the appeal as inadmissible, where necessary following a further hearing of the appellant.²³⁰ The appellant(s) may challenge a decision to reject the appeal as inadmissible within one month of service of the decision.²³¹

Within three months of service of the Statement of grounds of appeal, the other party in the appeal is to lodge a Statement of response. This contains a response to the grounds of appeal, wherein the respondent may support the decision of the Court of First Instance on grounds other than those given in the decision.²³² For example, if the patent was revoked by the Court of First Instance under Article 138 (1) (b) of the European Patent Convention in the Counterclaim for revocation because the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, in addition to the revocation grounds of insufficiency, in the appeal procedure, the revocation counterclaimant can, for example, be additionally based on lack of patentability under Article 138 (1) (a) in connection to Article 52 to 57 of the European Patent Convention. This applies in any event when the counterclaimant already claimed this before the Court of First Instance. If the Counterclaimant did not initially claim lack of patentability in the appeal proceedings, the Court of Appeal must also decide pursuant to Rule 222 (2) of the Rules of Procedure, whether this is to be taken into account or not.

A statement of cross-appeal can be lodged if permitted within the period for the Statement of response.²³³ Where the Statement of response includes a statement of cross-appeal, the appellant may, within two months of service of the Statement of response, lodge a Reply to the Statement of cross-appeal.²³⁴

The interim procedure and the oral procedure before the Court of appeal shall be carried out corresponding mutatis mutandi to the proceedings before the Court of First Instance.²³⁵

If the Appeal is well-founded, the Court of Appeal shall set aside the decision of the Court of First Instance and substitute a final decision or, in exceptional circumstances, refer the case back to the Court of First Instance for decision.²³⁶ In the latter case, the Court of First Instance is bound by the decision of the Court of Appeal and its ratio decidendi.²³⁷ Where a case is referred back, the Court of appeal must also specify whether the same panel whose decision was revoked shall deal further with the case or whether another panel shall be appointed by the President of the Court of First Instance.²³⁸ If the Court of Appeal makes a decision, it may exercise any power within the competence of the Court of First Instance.²³⁹ If the appeal is not well-founded, the Court of Appeal shall reject it.²⁴⁰ The same applies for partially founded and partially unfounded appeals.

In particular circumstances, the Court of Appeal can order a Rehearing following an Application from a party. This would be considered either where, without the knowledge of the claiming party before the decision was delivered, the decision was based on an act which has been held, by a national court, to constitute a criminal offence,²⁴¹ or where there was a fundamental procedural defect in the proceedings before the Court of First Instance or the Court of Appeal.²⁴² The Application must be lodged within two months of the national court's decision that it constituted a criminal offence or after service of the final decision of the court. Ten years after service of the final decision of the court, a rehearing is no longer permissible.²⁴³

A fundamental procedural defect would include a judge of the Court of Appeal taking part in the decision in breach of Article 17 of the Agreement and Article 7 of the Statute regarding judicial independence and impartiality.²⁴⁴ An Application for rehearing on the grounds of a fundamental procedural defect is only admissible where this was already raised during the proceedings before the Court of Appeal and dismissed by the Court, except where such an objection could not be raised.²⁴⁵

The Application for rehearing has no suspensive effect, unless the Court of Appeal orders it.²⁴⁶ A panel of three judges makes a decision regarding the Application. The President of the Court of Appeal shall assign the case to this panel. He may order that judges of the Court who participated in taking the decision to be reviewed shall not sit on the panel.²⁴⁷ Initially the judge-rapporteur shall examine the Application. If the judge-rapporteur considers that there is no basis for reviewing the decision, he shall reject the Application and give his reasons, otherwise he shall refer the Application to the panel.²⁴⁸ The panel may either reject the Application for rehearing or allow the Request for rehearing and reopen proceedings for a new hearing and decision.²⁴⁹

General Rules of Procedure that can be referred to—as with the rules in many national patent laws —for further arrangement of the proceedings, do not exist. It is therefore necessary that the Rules of Procedure of the Unified Patent Court also contain general procedural provisions that are contained in part 5 of the Rules of Procedure. This includes provisions regarding the general procedure²⁵⁰ (in particular the preliminary references to the European Court of Justice),²⁵¹ service (within and outside the contracting member states),²⁵² the rights and obligations of the representatives,²⁵³ stay of proceedings,²⁵⁴ time periods, ²⁵⁵ parties (plurality of parties, change in parties, the death or demise of a party,²⁵⁶ the transfer of a patent,²⁵⁷ intervention,²⁵⁸ re-establishment of rights,²⁵⁹ the language of the proceedings,²⁶⁰ case management, ²⁶¹ the organisation of the Court,²⁶² decisions and orders (including enforcement),²⁶³ decisions by default,²⁶⁴ actions bound to fail or manifestly inadmissible, ²⁶⁵ and settlement.²⁶⁶