RULE 13 - Contents of the Statement of claim
- 1- General
- 2- Required formal indications
- 2.1- Information required when the claimant is the sole proprietor of the patent or patents
- 2.2- Information required when the claimant is not the sole proprietor of the patent or patents
- 2.3- Information required when the claimant is not the proprietor of the patent or patents
- 2.4- Information required concerning Representation
- 2.5- Indication of the division which shall hear the action
- 2.5.1- Competence of the central division
- 22.214.171.124- The defendant does not reside in a Contracting Member State
- 126.96.36.199- The infringement act is made in a Contracting Member State having no local or regional division
- 188.8.131.52- Infringement actions following revocation
- 184.108.40.206- Agreement of the defendant
- 220.127.116.11- Numerous infringements
- 18.104.22.168- Infringement action, with revocation action pending
- 2.5.2- Competence of a local or a regional division
- 2.5.1- Competence of the central division
- 2.6- Action heard by a single legally qualified judge
- 3- Required substantive indications
- 3.1- The nature of the claim
- 3.2- The order sought
- 3.3- The remedy sought
- 3.4- The facts relied on
- 3.5- The evidence relied on
- 3.6- The reasons and arguments concerning the alleged infringement
- 3.7- Indication of any order which the claimant will seek during the interim procedure
- 3.8- Indication of the value of the infringement action
- 3.9- Documents and witness statements
- 3.10- Confidential documents
1- Rule 13 defines the required information which have to be mentioned in the Statement of claim.
The form prepared for electronically lodging the Statement of claim in the ITCMS, can serve as a « check list » and should avoid to forget a required information.
The Statement of claim must contain
- - formal indications
- - substantive indications
- - indications relating to the procedural organization of the action
2- Rule 13 must be read together with Rule 16 which lists the required formal indications, the absence of which may lead to a decision by default but which can be corrected. All other indications, which do not appear to be “formal” are more “substantive” and do not appear in the list of Rule 16. Consequently, those other indications, which are also required, cannot be added or corrected at an early stage of the procedure like the formal indications.
3- The importance of the Statement of claim must be emphasized : the entire written procedure includes only a few possibilities of filing a written pleadings. Indeed, after the Statement of claim, the plaintiff can only file a Rejoinder to the Reply filed by the defendant. (see Rule 12).
Consequently it is difficult to add written elements to the proceedings in addition to the content of the Statement of claim.
The court may also be reluctant to consider during the oral hearing any additional point not already mentioned in the written procedure.
4- It must be noted that in some countries like France, the court is not allowed to introduce ex officio a missing argument or statement that has not been filed by one of the parties.
In a decision issued in October 2002, the French Cassation court considered that a Court of appeal could not invalidate the whole patent when the defendant only requested the invalidity of claims 1, 4 and 7 within the frame of the proceedings (Cass. Com. October 8, 2002, No. 00-14599).
5- If the claimant is the only proprietor of the patent or patents, his name must be indicated, with postal address and electronic address for service. Also required is the location of the registered office in case of a corporate entity. (Rule 13-1 (a and c)
Nothing more precise is required.
Nevertheless, it is advisable to also indicate in the Statement of claim, any specific detail allowing to identify the plaintiff without any doubt. In some cases namely, the name of a company with a postal address may not unequivocally define a judicial person. In France for example the « SIRET » number, a number given by the commerce register, is a better identification of a company than its name.
6- The rule insists on the addresses for service (postal and electronic in Rule 13-1(c)) as well as the names of the persons authorized to accept service (rule 13-1(c)). Those indications have namely the aim of allowing the court and the other party to serve to the claimant all necessary communications and pleadings during the course of the action. Since all exchanges should in principle occur by electronic means, the electronic address is of course essential. In addition however, the precise and exact definition of the person lodging the Statement of claim, including the registered address in case of a corporate entity, is essential to avoid any risk of inadmissibility of the Statement of claim.
The position and name of the physical person authorized to engage the company in case of a corporate entity (CEO for example) is however not expressly required. This is in contrast with the requirements before a French court in case of a judicial action. However, the persons authorized to accept service must be named.
7- Indicating the names of the persons authorized to accept service is only a formal requirement but may create difficulties if those persons change during the course of the procedure.
In case of such a change, the court must be informed. This is specified in Rule 6.3, which requires that the new postal or electronic address for service of a party be given to the Registry as soon as it has taken place. Rule 279 repeats this requirement but only for the electronic address. If a party fails to inform the Registry of the new address, any document from the Court will be validly served at the old address and the party not receiving such a document will have the only recourse to apply for re-establisment of rights according to Rule 320. The judge-rapporteur or the panel may also, if it is obvious that an address has become obsolete, extend any period, in accordance with the general case management. (see Rule 334).
If all this has failed, a decision by default may be given, according to Rule 355.
8- Specific information is required when the patent or patents is owned by several persons.
The co-ownership of a patent is governed by the national law in case of a European patent having national effects in a specific designated country. In case of a Unitary patent, the co-ownership is governed by the national law where the applicant had its residence at the date of filing the patent application (within the territory of the Contracting member states) or by the German law if the applicant is domiciled outside the EU (Article 7(3) of the Regulation 1257/2012 on the Unitary patent).
For example according to French patent law, a co-owner of a patent is entitled to engage alone an action before the courts but he must notify the writ filed to all the other co-owners. The court stays the proceedings until evidence of this notification has been filed before the court.
9- Rule 13-1 (e) and (f) require apparently that the address for service of the other co-owners of the patent be communicated. The purpose of this requirement is clearly to inform the other co-owners of the action engaged and give them the possibility to intervene.
Failure to give this indication in the statement of claim should not have a bearing on the admissibility or validity of the Statement of claim. This must be judged according to the relevant national law governing the co-ownership or to the agreement entered into by the co-owners of the patent.
10- The claimant may be the holder of an exclusive or non exclusive license of the patent according to Article 47(2) and (3) of the Agreement.
In both cases, two different kinds of information are required, namely first the address (postal and possibly electronic) of the proprietor and secondly, the evidence that the licensee is entitled by the license agreement to engage an action alone. Also required is evidence that the proprietor has been given notice by the licensee that a court action is going to be engaged by the licensee.
11- In all cases, it is obviously possible for a patentee who is the sole proprietor or a co-owner, to engage an action together with a licensee. This has clearly the advantage to allow both, the proprietor of the patent and the licensee to request compensation of their own damages.
The rule does not give any detail on the information required in such a situation. It would not make sense to require for example from a licensee to indicate the address of the patentee if said patentee is also a party to the engaged action and is therefore required to indicate his address in the same Statement of claim.
It must be assumed therefore, that the information required when a person who is not the sole owner of the patent (case of co-ownership) or is not owner of the patent (case of a license) is not anymore necessary if the other co-owners or the patentee are part of the proceedings and file a corresponding Statement of claim at the same time.
12- Rule 13-1(a) requires an indication about the claimant’s representative. It must be assumed that the same applies if the claimant is represented by several representatives forming a team.
However, Rule 13-1(c) relating to the addresses for service on the claimant does not mention the electronic address of the claimant’s representative. This is strange since Rule 278-5 clearly state that the pleadings and other documents are served on the representative in all cases where a party is represented. The same results from Rule 271.This is the case in almost all procedures before the Court (see Rule 8-1) with the only exceptions of the procedures relating to opting out (Rule 5), the procedures relating to decisions of the EPO (Rule 88-4) and the procedures relating to the legal aid (Rule 378-5).
In fact, apart from those limited exceptions, representation before the Court is compulsory, as stated in Articles 48-1 and 48-7 of the Agreement.
13- Therefore, in all procedures where a representative is required, the postal an electronic addresses of the claimant will not be used. Since Rule 13 relates exclusively to the content of the Statement of claim in an infringement action, i.e. a procedure requiring a representative, service directly on the claimant will only occur if there is a change of representative or the claimant has indicated that a previous representative should be revoked or, for any reason, service on the representative would not succeed.
14- The claimant has to justify the choice he makes of the division, which shall hear the action. Explanations must be given in the Statement of claim concerning the competence of the division.
15- The basis of the competence is stated in Article 33(1) of the Agreement :
- - either the place where the infringement occurred
- - or the residence or place of business of the defendant.
This should theoretically be sufficient for the claimant to determine the division, which is competent to hear the case. However, the decentralized organization of the first instance Court leads to a large choice of venues between the various local and regional divisions which are spread over the territories of the Contracting Member States. In addition, the Agreement also provides the possibility, in certain situations, to bring an infringement action before the central division.
16- Since the language of proceedings before the central division is the language of the granted patent – that is, English, German or French-, there may be a significant advantage to bring a case before the central division instead of before a local or regional division, where the language will be one of the official languages of the country in which the division is located (or one agreed on by the country that set up the division). The language of any appeal following a decision of the central division will also be English, German or French, since the language before the Court of Appeal will always be the language used at first instance.
In many circumstances, therefore, plaintiffs may want to bring their case before the central division rather than before a local or regional division.
17- The plaintiff has the choice to bring an infringement action before the central division if one of the defendants is domiciled outside the territory of the Contracting Member States. Such a defendant may be accused, for example, of infringement by importation of a product into the territory of a Contracting Member State (Article 25(a)). Even if the user of the product is domiciled in the territory of one of the Contracting Member States, it is thus possible to sue all the defendants before the central division. The plaintiff’s decision cannot be contested by any of the defendants.
Of course, consideration must be given to Article 33(1)(b), which states that the defendants must have a commercial relationship and the action must relate to the same infringement (product or process).
18- According to the last sentence of Article 33(1), if the Contracting Member State in which the infringement took place has no local division and does not participate in a regional division, the case is brought before the central division.
19- If, therefore, one or several Contracting Member States decide not to create a local division or not to join a regional division, or decide to dismantle their local division or cease their participation in a regional division, all infringement cases that could have been brought before a local or regional division of that Member State must be brought before the central division.
The reason for this seemingly strange provision is that the competence of a division can always be defined on the basis of the place where an infringing act took place. If there is no local or regional division at that place, an alternative must be provided : this alternative is the central division.
20- According to Article 33(5) of the Agreement, if a revocation action is pending before the central division, an infringement action based on the same patent may be brought before the central division as well. In that case, the defendant in the infringement action, who had first initiated a revocation action, must bring its case before the central division. Therefore, the plaintiff in the infringement action (which was the defendant in the revocation action) will have, in this case, the possibility of choosing the central division, so that the central division will rule on both cases (infringement and revocation).
21- However, according to Rules 70 and 71, where a plaintiff has applied for revocation or a declaration of non-infringement before the central division and the defendant subsequently initiates an infringement action before a local or regional division against the plaintiff in respect of the same patent, the president of the Court of First Instance shall, unless otherwise agreed by the parties, require the panel of the central division to stay the proceedings, pending a decision of the panel hearing the action for infringement.
22- According to Article 33(7) of the Agreement, the parties may agree to bring an infringement action before the division of their choice, including the central division. It is unclear how this could work in practice, however. If the plaintiff alone decides to bring an infringement action before the central division on the basis of this provision, how will the plaintiff know that the defendant will agree with this choice ? The only possibility would be for the plaintiff first to contact the alleged infringer (for example by a warning letter) and request an agreement to have the case heard by a certain division. Otherwise, the defendant can challenge the plaintiff’s choice and immediately argue that it objects to the case being heard by that division.
23- According to Article 33(2) of the Agreement, if an infringement action is pending before a regional division and the infringement has occurred 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. The purpose of this provision may be to try to prevent forum shopping by the plaintiff. Here, the choice of the central division is reserved to the defendant, not to the plaintiff. This may also be a strategy used by the plaintiff in order to have the case heard by the central division.
This provision will however not come into force if the total number of regional divisions does not exceed two.
24- According to the last sentence of Article 33(2) of the Agreement, if an action is pending before a division (which could be the central division seized of a revocation action), and another action is brought before another division (e.g. an infringement action) between the same parties and concerning the same patent, the division first seized shall be competent for the whole case.
25- This seems to imply that if a revocation action is pending before the central division, a subsequent infringement action must be brought before the central division, which will then handle both the revocation and the infringement actions.
This, however, is contradicted by Article 33(5) of the Agreement, which states that in such a situation, it is possible, but not compulsory, to bring the action before the central division. In any case, it shows that a patent holder will be free to bring an infringement action before the central division if the alleged infringer has already initiated a revocation action. In such a case, a single decision on both validity and infringement will be issued, thus avoiding any bifurcation.
26- By contrast, a third party filing first a revocation action against a patent will run the risk (or have the advantage) that the central division be chosen by the patent holder in case of a subsequent infringement action. In such case, Rule 40 provides that the judge-rapporteur shall accelerate the procedure before the central division. It is difficult to predict what will happen in practice, but the idea is clearly that the local division, having referred the counterclaim to the central division, need not stay infringement proceedings for too long.
27- The first choice is the place of infringement or the place of threat of infringement. The plaintiff must be aware of certain acts of infringement and must know where those acts have occurred. If said acts occurred on the territory of several Contracting Member States, the plaintiff may choose any local division seated in one of those States based on the provisions of Article 33(1)(a) of the Agreement.
Since an infringement or a threat of infringement is a requirement for filing a Statement of claim for infringement, it means that the plaintiff has always the possibility of choosing the division located where an infringement occurred.
28- This does not mean that the plaintiff has no choice. In practice, several infringement acts may have occurred leaving a choice of possibly several local or regional divisions to bring the action.
Since a threat of infringement is equivalent to an act of infringement, the plaintiff may also choose a local or regional division located in a Contracting Member State where no effective infringement occurred but where it is possible to afford evidence of only a threat of infringement.
This choice is perfectly valid even if effective acts of infringement occurred on the territory of other Contracting Member States.
29- The second choice is the residence, or principal place of business or place of business of the defendant according to Article 33(1)(b) of the Agreement.
This opens to the plaintiff a second category of possible choices for the division where the action may be brought.
This second category of choices is normally more limited. It comprises three possible locations :
- - The residence of the defendant
- - The principal place of business of the defendant
- - And, only if the defendant has its residence and its principal place of business outside the territory of the Contracting Member States, a simple place of business of the defendant
30- The residence of the defendant should normally be easy to determine, for example by checking the companies register in the State where it is assumed that the defendant has his residence.
When the company main office cannot be easily identified, the claimant may have the possibility to bring the action where the company of the defendant has a branch or an agency having the power to represent the company before third parties as long as :
- - there is a link between said branch or agency’s activity and the dispute at issue ; or,
- - damages occurred in said branch or agency’s jurisdiction (Cass. Civ. 2., April 6, 2006, No. J 04-17849).
31- In case of an infringement constituted by the manufacturing of a patented product or the reproduction of a patented method of making a product, the defendant may have its residence precisely where the manufacturing occurs. The plaintiff may then base its decision for choosing the local or regional division on the place of infringement, if evidence of infringement is clear and easy to afford, instead of basing its decision on the residence of the defendant.
32- Rule 13(1)(i) requires that the Statement of claim indicates the choice of the division as well as an explanation of the reasons why that division has competence. This requirement is only for an “indication”. However, bringing an infringement action before a division, which is not competent, will lead to a rejection of the action by the division and to the necessity for the plaintiff to file a new Statement of claim before another division. The defendant can contest the competence of the division indicated by the plaintiff, by lodging a Preliminary objection, as provided in Rule 19-1(b). The judge-rapporteur shall decide the Preliminary objection according to Rule 20 and this decision may be appealed (Rule 21).
33- On the other hand, if the explanations about the alleged competence of the division, appear to be erroneous or insufficient during the further procedure, this will have no consequence if the competence of the division can be justified afterwards on the basis of different and acceptable grounds.
34- The “principal” place of business may be more difficult to ascertain in practice as compared to the residence of the defendant. The plaintiff must give full explanations in the Statement of claim as to this “principal” character.
35- The choice of the competent division may also be based on “any place of business” of the defendant.
However, according to article 33(1)(b) of the Agreement, this is only possible if the defendant has no residence and no “principal” place of business on the territory of any Contracting Member State. Consequently, if the defendant has a “principal’ place of business on the territory of a Contracting Member State, it is not possible to bring the action before a local or regional division located in another Contracting Member state where the defendant has another place of business different from said “principal” place of business.
36- When deciding to bring the action before a division on the basis of the location of the “principal” place of business of the defendant, it is therefore essential to be absolutely certain that this “place of business” of the defendant is effectively the “principal” place of business of the defendant.
37- It must be noted that the principal place of business of a company may be different from the registered office or the central administration of said company, as stated in Article 54 of the Treaty on the functioning of the European Union (TFUE). A similar statement is provided in the Brussels Regulation (Article 63-1). (Regulation EU N°1215/2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters)
Normally, the “principal place of business” of a company should be where the most important economical activity of that company effectively takes place.
In any case, the method of choice based on the place of business of the defendant appears rather dangerous and should only be adopted if serious reasons justify its use.
38- Regional divisions may be set up for two or more Contracting Member States according to Article 7(5) of the Agreement. Such a regional division will be assimilated to a local division acting on a broader territory covering the territory of the two or more Contracting Member States which have agreed to set up the regional division. All considerations made previously and concerning the territory of a local division can therefore be applied to the broader territory covered by a regional division.
39- According to article 33(1)(b) of the Agreement, an action may be brought against multiple defendants only where the defendants have a commercial relationship.
The question arises therefore, whether this relationship must exist between all the defendants or only between some of them. For example, if one of the defendants is manufacturing an alleged infringing product and several other defendants distribute in different territories that same alleged infringing product, is it sufficient to consider the commercial relationship between the first manufacturing defendant and each distributor or is it necessary to afford evidence of a specific relationship between each of the distributors ? It seems reasonable to consider that a commercial relationship between the manufacturing defendant and each individual distributor is sufficient in that case.
40- If no real commercial relationship can be proven between two defendants, it is compulsory to lodge two separate infringement actions. If those two actions are handled by the same division, it should be possible to request that the two actions be heard together as suggested in Rule 302-3 for the case of a plurality of claimants.
This, of course is not possible when the two actions are before two different divisions of the Court. In such a situation, it could be possible to interpret the provisions of Article 33(2) of the Agreement so that the division first seized would be competent for the whole case and the later seized division would declare the action inadmissible. Rules 360 to 362 relating to actions bound to fail or manifestly inadmissible, may be applied.
41- In any case another condition provided in article 33(1)(b) of the Agreement, is that the action must relate to the same alleged infringement. The word "infringement" used in this article should be interpreted as meaning the generic concept of infringement. It should not mean a specific act of infringement such as making a product or selling a product. Consequently multiple defendants may each proceed with different acts of infringement and nevertheless be multiple defendants in the same action for infringement.
42- In the case of multiple defendants the provisions relating to the place of residence of the defendant or its place of business will apply to each defendant. In other words the choice of the competent division may be based on the residence or principal place of business of any of the multiple defendants.
43- However as for the case of a single defendant, the Statement of claim must contain explanations as to why a specific division has competence to hear the case according to the plaintiff. Therefore if a specific division is chosen by the plaintiff on the basis for example of the residence or the place of business of one of the defendants which is different from the place of business or the residence of the other defendants, the same difficulties which have been previously mentioned for a single defendant, will occur.
Again the method of choice based on the residence or place of business of any defendant is certainly more risky than the method of choice based on the place of infringement.
44- According to Article 8.7 of the Agreement, the parties may agree to have their case heard by a single legally qualified judge. If this is the case, the Statement of claim should contain a corresponding indication.
45- Obviously this needs a previous agreement between the parties. Such a previous agreement is in practice seldom. Consequently the use of a single judge to hear an infringement action will probably be limited to cases where the parties agree afterwards to have the case heard by a single judge. A subsequent agreement can be made during the court proceedings. It seems namely that the parties may agree at any time to have the action heard by a single judge. Rule 345.6 does not forbid a subsequent agreement of the parties in this regard.
46- The only consequence of having a single judge is indicated in.
Rule 370.9(a), providing for a reimbursement of 25% of the fixed and value-based court fees.
47- In addition with the formal indications, some substantive indications are also required.
These include the nature of the claim, the order or remedy sought, the essential facts constituted by the details of the patent and the patent claims, which are deemed to be infringed, the evidence relied on and the reasons why the patent is considered infringed.
48- However, contrary with for the formal indications previously mentioned, failure to mention those substantive indications in the Statement of claim will not immediately lead to a possible decision by default. It is also not possible to correct a deficiency when one of those substantive indications fails in the Statement of claim, contrary with the failure to mention formal indications, which can be corrected according to Rule 16.
Substantive indications which are lacking in the Statement of claim could possibly be added at a later stage of the proceedings. However the risk is great that such an addition be difficult. The defendant, in its Statement of defence, will be able to note the absence of essential indications, so that the plaintiff will only have the possibility of adding further indications in the Reply to the defence, thus losing one step.
49- In a similar way, French courts usually decide to reject an action if substantive indications are missing in the Statement of claim.
In a decision rendered in November 2013, the Court of First Instance of Paris rejected the Statement of claim filed by the patent owner because the patent owner had not :
- - specified the main characteristics of the invention,
- - submitted the European patent on which the action was based ;
- - indicated the relevant article of the French Intellectual Property Code that would apply (Court of First Instance of Paris, 3rd Chamber, 3rd section, November 8, 2013, RG 13/06786).
50- The claimant must indicate which type of action is concerned, among the list of possible actions for which the Court has exclusive competence according to Article 32 of the Agreement. This seems to be clear from the wording of Rule 13 even if this Rule is part of the Section of the Rules of procedure relating to “infringement actions”.
For example, it must be indicated whether the action is for infringement (Art 32(1) (a)) or for provisional measures (Art 32(1) (c)).
Failure to give this information may result in rejection of the Statement of claim as inadmissible
This information is namely the fundamental basis of the action. It must be known and understood by the court and by the defending party.
51- The nature of the action is unique : it is not possible to mix two different actions together, for example an action for infringement together with an action for provisional measures. In such a case, two different actions must be engaged (and two different court fees must be paid).
52- The claimant must indicate in the Statement of claim, precisely what is sought.
In the case of an action for infringement, it will usually mainly be an order to forbid continuation of the infringement i.e. an injunction.
53- Several additional orders can be mentioned at the same time. For example, in addition to an order to forbid continuation of infringement (permanent injunction according to Art 63 of the Agreement), it should be possible to request that the court issues an order to carry out an experiment (Rule 201), an order to produce evidence which is suspected to be under the control of the other party (Art 59 of the Agreement).
An order for experiments should be requested as soon as possible during the written or interim procedure as stated in Rule 201-2.
An order to produce evidence (Article 59 of the Agreement) may be requested at any time during the written and interim procedures as stated in Rule 190.2.
An order to freeze assets may be requested at any time, even before the proceedings have been commenced (Rule 200-1)
54- Other examples of orders which can be simply requested in the Statement of claim are the various orders for hearing witnesses, experts of the parties, court’s experts. All these orders which the claimant may also request during the interim procedure can advantageously be mentioned in the Statement of claim.
All those orders may simply be requested without a specific Application and may therefore be mentioned in the Statement of claim.
55- On the other hand, other orders require to lodge a specific Application via the ITCMS and to pay a court fee. It seems therefore that they cannot simply be requested in the statement of claim.
This is the case for an order to freeze assets (Art 61 of the Agreement ; Rule 200), an order to communicate information (Article 67 of the Agreement ; Rule 191) or an order to preserve evidence or inspect premises (Art 60 of the Agreement ; Rule 192).
56- If an order has not been mentioned in the Statement of claim, it may still be requested at a later stage during the written or the interim procedure. The judge rapporteur may namely issue orders according to Rules 104(e) and 104(g) during an interim conference.
Of course, the decision of the Court concerning any such order requested by a party, will be issued more quickly if it has been requested in the Statement of claim. The decision concerning such an order may be appealed immediately according to Rule 220-1(c).
57- Rule 13-1(k) mentions as required information, « the order or remedy sought ».
This seems to imply that only a single order or a single remedy should be mentioned.
Nevertheless it should be possible to indicate in the Statement of claim, one or several orders together with one or several remedies sought.
58- Remedies in the case of an action for infringement are usually the possibility to request one or several measures as mentioned in Article 64 of the Agreement, such as recalling infringing products from the channels of commerce or destruction of the products and/or the materials and implements concerned (Article 64(2) (b) and (e) of the Agreement).
59- While damages mentioned in Article 68 of the Agreement do not seem to be treated as part of the remedies mentioned in Article 64, it should be possible, in certain situations, in an action for infringement, to request already in the Statement of claim the award of a certain amount of damages, for example as provisional damages.
This is for example possible if sufficient evidence of the extent and importance of the infringement has been obtained already before the filing of the Statement of claim.
60- As for damages, it should be possible to request already in the Statement of claim the payment of the recoverable costs (legal costs and other expenses) which the claimant will have to support during the action proceedings, including the professional fees of representation before the court.
61- At the stage of the filing of the Statement of claim however, the amount of the recoverable costs may be largely unknown. A simple request mentioning said costs with an indication that the precise amount will be given at a subsequent stage, could however be appropriate in the Statement of claim.
62- The facts relied on may be constituted by an infringement act or several infringement acts differing by their nature or by their geographical location. The claimant may simply pretend that an infringement occurred and present the facts afterwards. This however seems somewhat insufficient in practice since the claimant may not have the chance of supplementing the Statement of claim during the remaining written procedure.
Consequently, if an indication of the facts relied upon is not absolutely compulsory, it appears advisable to include such an indication in the Statement of claim.
63- Indicating the nature of the infringement act is useful in many circumstances since the evidence required will depend on the nature of the infringement act : for example, manufacturing an alleged infringing product will require a different kind of evidence than simply selling said product.
64- The geographical location of the infringement act may be necessary to determine the competence of the division, which will hear the case. If infringement acts occurred on the territory of several Contracting Member States, the provisions of Article 33 of the Agreement have to be applied to determine which division is competent : the determination depends either from the place of the infringement act or from the residence or place of business of the defendant. If the defendant resides outside the territory of the Contracting Member States, the infringement action may be brought before the central division.
65- The date of the infringement act must also be indicated. In practice this date will often be the date at which infringement has been evidenced.
The indication of the date will allow to determine the status of limitation.
66- It must be noted that only an « indication » must be provided concerning the place and date of the infringement acts. Evidence sustaining such « indication » is also required but as an additional requirement.
67- The identification of the patent claims alleged to be infringed is most important since it is the basis of the action.
68- In France, failure to indicate the claims alleged to be infringed may lead to rejection of the action for lack of basis (inadmissible claim).
In a decision issued in March 2011, the Paris Court of 1st instance invalidated the statement of claim because the claimant had only described the alleged infringing product without specifying which claims of the patent were infringed, nor explaining the infringement act in itself (Court of First Instance of Paris, 3rd Chamber, 1st section, March 22, 2011, RG 10/09882).
69- Indicating the alleged infringed claims in a later stage of the written, interim or oral proceedings may prove to be difficult.Rule 263 opens a possibility for a party to request leave to change its claim. Therefore it should be possible, but only with the agreement of the panel, to indicate at a later stage of the proceedings, the claims of the patent which are deemed to be infringed. In taking a decision on such a request, the Court will however certainly take into consideration the general principles of the case management recited in Rule 332, according to which, the progress of the action should be controlled (Rule 332(g)) and the hearing should proceed quickly (Rule 332(l)).
70- Evidence of infringement must be given in the Statement of claim but only if available.
This means that a Statement of claim may be filed without detailed evidence of infringement, said detailed evidence being provided at a later stage.
71- A simple statement of fact which is not contested by the other party at a later stage should be sufficient : as mentioned in Rule 171-2, such kind of statement shall be held to be true between the parties.
72- Evidence of infringement may be obtained by any means (Article 53 of the Agreement gives a list of possibilities ; see also Rule 170)
In practice, it can be the purchase of an alleged infringing product.
The study of an internet web site by an independent expert or a bailiff in countries where bailiffs are available, can also be used for evidence. Certain conditions must however be fulfilled for accepting such kind of evidence.
73- For example, in a decision rendered in 2011, the Paris Court of 1st instance reminded that the bailiff report operated on internet must fulfil technical conditions including :
- - describing the software and hardware used by the bailiff ;
- - specifying the date and the hour appearing on the screen ;
- - identifying the IP address of the website concerned ;
- - clear the computer memory ;
- - disable any proxy server on the computer.
Failure to do so leads to the invalidity of the bailiff report. (Court of First Instance of Paris, 3rd Chamber, 3rd section, January 7, 2011, RG 09/14922).
74- In another decision, the French Supreme Court ruled that a bailiff who opens an account on a website and proceeds with the purchase of a litigious product without a prior authorization of a judge exceeds his authorities. The resulting bailiff report must be invalidated (Cass. Civ 1. March 20, 2014, No. 12-18518).
75- Evidence can also be filed in the form of the result of an order for preserving evidence or inspection of premises according to Article 60 of the Agreement which can be obtained before filing the Statement of claim.
76- Evidence of infringement can be completed at a later stage of the proceedings.
For example, an order to produce evidence according to Article 59 of the Agreement may be obtained at a later stage for this purpose.
77- If the claimant knows about details of further evidence, this should be indicated. Failure to give such an indication should however have no negative consequences since an order to produce further evidence is available at a later stage.
78- The reasons, arguments and points of law justifying the existence of an infringement of the patent are of course in practice important. However they are not compulsory. It is sufficient to file an indication that certain claims are deemed to be infringed.
Nevertheless failing to file those reasons and arguments will lead to great difficulties since the claimant is only allowed to file a Reply after having received the answer of the defendant in a Statement of defence.
79- If the defendant limits his arguments to basic comments in answer to an imprecise Statement of claim, the written procedure will be extremely limited. The parties will have to rely on the interim and oral procedures to develop their argumentation.
80- Such an indication may facilitate the subsequent interim procedure since the judge rapporteur will know what the claimant intends to request during the interim procedure. This could allow to accelerate the interim conference or even to avoid the necessity of holding an interim conference. However, the claimant is not obliged to give this indication and it may be preferable for the claimant to withhold any such information given also to the other party.
81- This indication may relate to the orders that the judge rapporteur is able to issue during the interim procedure. Orders of that sort are listed for example in Rule 104(e) and can relate to evidence production, experiments or inspections.
82- This indication is only required if the claimant considers that the value of the infringement action exceeds the level provided in the Rules relating to the court fees (500 000€).
83- The value of the action should be estimated following the Guidelines issued by the Administrative Committee.
According to those Guidelines, the most practicable method is a valuation based on a licence fee.
According to the Guidelines, a royalty rate should be based upon :
(a) the existing royalty rate for the same invention charged by the claimant,
(b) the generally accepted industry rate for the type of invention in
(c) a royalty rate determined by the Court after hearing the parties.
84- The valuation should take into account all remedies claimed (injunction and damages) and be calculated on the basis of a combined licence for all territories covered by the patent or the patents if there are more than one patent or more than one defendant.
85- The royalty calculation should be based on the defendant’s turnover in the alleged infringing product or method, up to the expiry of the patent or the market share the defendant has taken.
86- In addition, if the Statement of claim specifies an amount of damages, the value should correspond to the amount claimed.
87- The documents and witness statements referred to in the Statement of claim must be listed and a copy thereof supplied together with the Statement of claim (Rule 13(2)).
A copy of each document must be supplied. There seems not to be any difference between technical articles, witness statements on the one hand and patent documents on the other hand. Therefore even patent documents must be filed together with the statement of claim.
88- Failure to do so should not have negative consequences as long as those documents and witness statements are precisely mentioned in the Statement of claim.
They can be provided at a later stage of the procedure, for example together with a subsequent Reply or even during the interim procedure.
89- When documents and witness statements are filed, they should be in principle in the language of the proceedings as provided in Rule 7. Nevertheless, in some circumstances all or part of those documents and witness statements can be filed in another language. In that case, a specific request should be filed (Rule 13.1(q), together with an explanation as to why the plaintiff considers a specific document does not need to be translated in all or in part. This could be the case if patent documents are written in English for example when it seems reasonable to think that the court and the defendant would have no difficulty to understand the document. The judge rapporteur, as soon as designated, will have the possibility of reviewing any request that documents or witness statements may not be translated or only a part thereof and to refuse such a request.
90- If the plaintiff has filed such a request concerning the translations of parts of documents only and if the judge-rapporteur decides to refuse the request, the judge rapporteur may allowa time period to the plaintiff to file the necessary translation. The plaintiff may also appeal this decision, but only with leave of the Court of first instance, within 15 days of service of the decision (Rule 220.2). The decision of the judge rapporteur should be made as soon as practicable after his designation according to Rule 13(3), meaning that the defendant will not give his opinion on that point.
91- If afterwards, the defendant considers that a translation which has not been filed, is necessary, it should be possible to interpret Rule 24(h) so that the defendant has the opportunity, in the Statement of defence, to request an order or to indicate that an order will be requested to obtain this translation.
92- This appears to be the only option for the defendant since the Preliminary objection provided in Rule 19, which may concern the language of the Statement of claim, does not seem to allow an objection relating to the translation of documents and witness statements accompanying the Statement of Claim.
93- In a similar way Rules 39(2) and 41(d) state that the judge rapporteur may authorize that only excerpts of documents and parties’ written pleadings be filed before the central division when an action is referred to the central division.
94- The general principle of the proceedings before the UPC is that the entire proceedings is open to the public as stated in Article 45 of the Agreement. Consequently, all documents, written pleadings and written evidence are made available to the public by the Registrar as soon as received.
95- This is not the case before the courts of certain countries. For example, in France, the written pleadings are not available to the public. The same is true for any written evidence filed before the court. Only the final decision of the court is available to the public.
96- This general principle of transparency of the procedure before the UPC is however mitigated by the existence of another general principle, which is the protection of confidential information.
97- In this regard it is worthwhile to consult the recently accepted EU Directive on the protection of trade secrets (Directive on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure) (Directive EU 2016/943)
Clearly, the Procedure before the UPC must conform to the protection requirements of trade secret provided in the Directive.
98- Article 2(1) of the Directive defines a “trade secret” as meeting the three following cumulative requirements :
- - be a “secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question” ;
- - have a “commercial value because it is secret” ;
- - have been “subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret”.
99- Article 60(1) of the Agreement provides for the necessary protection of confidential information when proceedings to a measure of preservation of evidence or of inspection of certain premises.
Article 45 of the Agreement, more generally provides for the possibility of the Court to decide that the proceedings be made confidential in whole or in part.
In some cases namely, a party will want to keep a document confidential, avoiding that the public accedes to said document. The possibility to avoid availability to the public is organized by Rule 262.
100- The party wanting to keep confidential a document attached to the statement of claim must file a request in the Statement of claim.
Failure to make this request in the Statement of claim will lead to public availability.
There is no possibility of filing a request at a later stage with the hope to stop the Registrar of making the whole file available to the public.
101- The protection of confidentiality of information may be requested, not only toward the public but also, in certain cases toward the other party. This may be the case of written evidence in whole or in part. This could however be contrary to another essential principle, which is the contradictory principle according to which a party must have the possibility of answering to any argument or evidence filed by the other party.
102- A first solution, which is sometimes used, is to allow only the representatives of each party to consult confidential documents. While this solution certainly permits to guarantee a high level of protection of the confidential information, it is questionable if it satisfies completely with the necessary information of the parties in view of a real contradictory discussion.
103- A second solution consists in allowing a limited communication of the confidential information to only certain specific persons of the other party in addition to the representatives of said party. Article 58 of the Agreement provides for such a restriction of the use of evidence in the proceedings or access to certain specific persons.
104- A specific request should be filed with the Statement of Claim(Rule 13.1(q), together with an explanation as to why the plaintiff considers a specific document should be kept confidential (Rule 262-1)
105- Rule 13(3) states that the judge rapporteur shall decide on any such request to keep confidential the entire proceedings or part of the written documents, as soon as practicable after his designation. In the time span between the filing of the Statement of claim together with the request to keep a document confidential and the designation of the judge rapporteur, the Registrar shall ensure that the confidential information is not made available to the public (Rule 262-1). This means that the Registrar has to study the Statement of claim to check the possible existence of such kind of request before opening the entire file to public inspection.
The plaintiff may appeal the decision of the judge-rapporteur on this request, but only with leave of the Court of first instance, within 15 days of service of the decision (Rule 220.2).
106- The decision of the judge rapporteur should be made as soon as practicable after his designation according to Rule 13(3), meaning that the defendant will not have the possibility to give his opinion on that point.
If afterwards, the defendant considers that the information concerned is not really confidential, it should be possible to interpret Rule 24(h) so that the defendant has the opportunity, in the Statement of defence, to request an order or to indicate that an order will be requested to obtain communication of this information.
107- The Preliminary objection provided in Rule 19, does not seem to allow an objection relating to the confidentiality of documents accompanying the Statement of Claim.
Alternatively and according to the general provisions of Rule 262-2, the defendant may lodge an Application with the Court for an order that the information may be made available to the applicant.