20 – UPC Proceedings (V): Rehearing

New year and further UPC Pills!

Our n. 20 pill on the UPC focuses on one of the relevant special proceedings: the rehearing.

The rehearing of a case – of which there has been already a final decision by the UPC – shall be based on one of the following grounds set out in Article 81 of the UPCA:

“a) on discovery of a fact by the party requesting the rehearing, which is of such a nature as to be a decisive factor and which, when the decision was given, was unknown to the party requesting the rehearing; such request may only be granted on the basis of an act which was held, by a final decision of a national court, to constitute a criminal offence; or ?

(b) in the event of a fundamental procedural defect, in particular when a defendant who did not appear before the Court was not served with the document initiating the proceedings or an equivalent document in sufficient time and in such a way as to enable him to arrange for the defence”.?

Therefore, pursuant to Art. 81 UPCA the rehearing before the UPC is possible when a criminal offence has been held or in case of finding of a procedural defect which shall be deemed as fundamental.

Regarding the first case, Rules of Procedure provides for a definition of criminal offence in Rule 249, i.e.: “A criminal offence shall only be considered to have occurred if it is finally held to be such an offence by a competent court or authority. A conviction is not necessary.”

With reference to the second case, Rules of Procedure just provides for a list of examples of fundamental procedural defects (R. 247), i.e.:

“(a) a judge of the Court took part in the decision in breach of Article 17 of the Agreement or Article 7 of the Statute;

(b) a person not appointed as a judge of the Court sat on the panel which took the final decision;

(c) a fundamental violation of Article 76 of the Agreement occurred in the proceedings which have led to the final decision;

(d) the decision was made without deciding on a request relevant to that decision;

or (e) a breach of Article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms has occurred.”

Another requirement for the valid lodging of a request for rehearing is mentioned in Rule 245.1 RoP: when lodging the request for rehearing the time for lodging an appeal for the final decision should be expired.

It should be noted that the revocation of the patent is not included in the abovementioned grounds for rehearing. However, Rules of Procedure of the UPC provides for this circumstance in Rule 354.2 regarding the counterclaim for enforcement: the Court may order that the decision/order ceases to be enforced, upon Party’s request, when the infringement action is concluded and the patent results to be amended or revoked.

Pursuant to Rule 245.1 RoP, any party adversely affected by the relevant UPC final decision is entitled to lodge an application for the rehearing of the case and in this case that party is defined as “the petitioner”.

It is possible to lodge an application for rehearing within two months (Rule 245). Obviously, time limits are different as they depend on which ground for rehearing is applicable. Indeed, 1) in case of a procedural defect, the two months’ time limit runs from the knowledge of the grounds or the service of the decision (whichever is the later); 2) in case of a criminal offence, the two months’ time limit runs from the date of which the criminal offence has been so held or from the service of the relevant decision (whichever is the later). In any case, Rule 345.2 (lit. c) provides for the general time limit according to which the relevant application for rehearing shall be lodged no later than 10 years from the final decision.

The Court of Appeal of the UPC is competent to decide on the application for the rehearing. Pursuant to Rule 254.2 RoP, the President of the Court of Appeal shall assign the application to a panel consisting of three legally qualified judges and may instruct other judges than those previously involved in the relevant decision.

If the panel rejects the application - as no allowable -, the initial final decision is upheld. Instead, the admission of the application by the panel entails the set aside or the suspension of the decision under review, in whole or in part, and re-opens the proceedings for a new hearing and decisions (R. 255 lit b) RoP).

The content of the application for rehearing is set out under Rule 246 RoP and shall contain:

“[…] (a) the names of the petitioner and of the petitioner’s representative;

(b) postal and electronic addresses for service on the petitioner and the names and addresses of the persons authorised to accept service;

and (c) an indication of the decision to be reviewed.

[…] the reasons for setting aside the final decision, as well as the facts and evidence on which the Application is based.”

Article 81.4 UPCA provides for interim rights. Indeed, when a person in good faith is using the patents which are the subject-matter of a decision which is under review with the rehearing, in the interim of the rehearing this person is allowed to continue using such patents.

The article is by Mattia Dalla Costa , Alessia Ferraro and Anna Iorio .