21/07/2022
On the 8th July 2022, the Administrative Committee of the Unified Patent Court (UPC) held their second meeting. For patent practitioners and proprietors (and applicants, though that doesn’t quite continue the alliteration), the most relevant outcome of this meeting is likely to be the amending of the Rules of Procedure of the UPC. Given that the most recent version (the 18th draft) was from 2015 (way back before Brexit, Covid, and Leo had won an Oscar) with the last amendment to it still only as recent as March 2017, this update has been long awaited – particularly now that the UPC system is finally due to come into effect in the coming months.
A number of changes have been proposed (all of which are no doubt very important), but one notable change that does jump out is an amendment to Rule 112 – Conduct of the oral hearing. New paragraph 3 of Rule 112 reads:
“3. The Court may decide to:
(a) allow a party, representative or accompanying person, to attend the oral hearing by videoconference,
(b) hear a party, witnesses or expert through electronic means, such as videoconference or
(c) hold the oral hearing by videoconference if all parties agree or the Court considers it appropriate to do so due to exceptional circumstances.
In all cases, the oral hearing shall be transmitted simultaneously in picture and sound to the court room.”
This rule provides a general provision for participation by parties and indeed the holding of the hearing itself by videoconference if both parties agree or at the Court’s discretion in exceptional circumstances. As noted in the explanation provided with this amendment, prior to this new rule participation by videoconference or other electronic means was only provided for in specific circumstances.
The new Rule 112.3 was no doubt influenced by the recent Covid pandemic which caused courts and similar organisations (such as the European Patent Office’s (EPO’s) Boards of Appeal) around the world to have to consider the fairness and practicalities of videoconference hearings in light of social distancing regulations and travel restrictions. Indeed, this is clear from the explanation accompanying the amendment which explicitly mentions travel restrictions as an exceptional circumstance under which the Court may hold oral proceedings via videoconference.
However, the amendment to Rule 112 takes a more forward looking approach, and is not purely reactionary to the extraordinary times of the last couple of years. The explanation makes it clear that other situations may be considered exceptional circumstances (including some which do not appear to necessarily be that exceptional). Specifically, “disproportionality” is given as an example of an exceptional circumstance. What exactly this means will likely be up to the judges to decide on in individual cases, but the example is given of a long journey for short and simple oral proceedings. Given the international nature of the globalised world and patent litigation, it seems likely that many hearings will involve long journeys, though perhaps fewer cases at the UPC will lead to short and simple oral proceedings.
Nevertheless, it would seem that even when there is no disruption to travel or similar restrictions preventing attendance in person, the Court is open (and indeed may decide) to hold hearings electronically. This is in contrast to the decision of the EPO’s Enlarged Board of Appeal allowing oral proceedings to commence via videoconference (G 1/21, discussed here) even without the parties consent. G 1/21 was quite limited in its scope, only relating to proceedings before the Boards of Appeal and only then during the pandemic; the new Rules of Procedure of the UPC go a step further.
We will have to wait a little longer to see how much use of videoconference the Court and parties before it make. Given that no exhaustive list of what constitutes exceptional circumstances has been provided, and that it is clearly intended to extend beyond the extreme case of a global pandemic, there is likely scope for parties to argue that their situation constitutes exceptional circumstances (or indeed that the other side’s do not). It will, no doubt, be interesting to see how the Court applies this new provision to the different circumstances that arise.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
