PRESSURE POINTS: DEVELOPMENTS AT THE PATENT COURTS IN LIGHT OF THE HEALTH EMERGENCY (UK, FRANCE, ITALY)

Courts of England and Wales

In response to the health emergency caused by COVID-19, the courts of England and Wales have put in place new measures to ensure that court work continues as much as possible. Overall, the judiciary is committed to continuing the work of the courts as a vital public service, although the message is to do what can be done safely.

Guidance from Lord Chief Justice

The Lord Chief Justice issued guidance in March 2020, the key points from which are as follows:

• The default position now must be that hearings should be conducted with some or all participants attending remotely, where that is possible. Court rules are flexible enough to enable telephone and video hearings of “almost everything”, and any legal impediments will be dealt with. The courts service is working urgently on expanding the availability of technology, but in the meantime the courts will make use of phones, video facilities and Skype.
• Many more procedural matters may be resolved on paper within the rules.
• The courts will have to use technology to conduct business which even a month ago would have been “unthinkable”, including final hearings and hearings with contested evidence. This is because otherwise “there will be no hearings and access to justice will become a mirage”.
• The Lord Chief Justice recognised that it may be difficult to maintain trials and final hearings in the short term, not least because of the inability of people to participate. As events develop, individual decisions on priorities and practicalities will have to be made.
• The Lord Chief Justice urged judges, before agreeing to adjourn any hearing, to use available time to explore with the parties the possibility for compromise.

Remote Hearings

In an effort to maintain the dates in the diary, the HM Courts & Tribunals Service published guidance on telephone and video hearings, available here. It appears that the main platform being used by the court for video hearings is Skype for Business, which has been activated on all staff and judicial laptops. Microsoft Teams is also being used in some cases.

How a hearing is conducted is a matter for the judge, and the guidance states: "In considering the suitability of video/audio, judges will consider issues such as the nature of the matters at stake during the hearing; any issues the use of video/audio technology may present for participants in the hearing; any issues around public access to or participation in the hearing."

The Senior judiciary also issued a new protocol regarding remote hearings in March 2020. The protocol emphasises that the objective is to undertake as many hearings as possible remotely so as to minimise the risk of transmission of COVID-19. It should be noted that the court may arrange a short remote CMC to discuss arrangements in advance, and also that the parties are not allowed to record any part of the proceedings.

A new Practice Direction 51Y was introduced in March 2020 and relates to video or audio hearings during the COVID-19 pandemic. This new Practice Direction:

• clarifies that the court can direct that a remote hearing be held in private if it is not practicable to broadcast the hearing simultaneously in a court building and it is "necessary to do so to secure the proper administration of justice". The summary on the CPR website explains that this is in addition to the power to direct a private hearing under CPR 39.2, and where it is exercised the requirement of CPR 39.2(5) (that the order directing the private hearing must itself be published) does not apply.
• confirms that a direction for a private hearing may not be made under the above provision "where a media representative is able to access proceedings remotely while they are taking place". The CPR website summary suggests that this means a private hearing cannot be directed if arrangements can be made for a member of the media to access the remote hearing (in which case it will be a hearing held in public).
• clarifies that the court must direct that a remote hearing be audio recorded, where that is practicable, and may also direct that it be video recorded where that is authorised by legislation under the Coronavirus Act 2020 or existing legislation (such as applies to Court of Appeal hearings).
• provides that "on the application of any person, any recording so made is to be accessed in a court building, with the consent of the court". The CPR website summary says this means that any person may apply to the court for permission to access the recording.

It is worth noting that third parties are able to access remote hearings, usually by emailing the relevant person at the court office. For instance, it has become practice for the cases on the Rolls Building Cause List to be accompanied by a note similar to the one below:

If a representative of the media wishes to attend the hearing they should contact the listing office chanceryjudgeslisting@justice.gov.uk who will put them in touch with the relevant person.

The Supreme Court has also put out communications which state that it intends to deal with hearings remotely going forward.

Filing documents

The Business and Property Courts of England and Wales are already equipped with an e-filing service (the “CE-File”). In addition, the protocol regarding remote hearings issued by the senior judiciary includes provisions about electronic bundles of documents/authorities. These can be filed on the CE-File or sent to the court by email or on a USB stick, but the "preferred" route is that they are sent to the court via a link to an online data room.

Service of documents

It is worth noting that there is no change to the CPR rules on service of documents under the new measures introduced for the duration of the health emergency, meaning that it is still possible to serve documents in hard copy only. This means that companies could be served with documents without their knowledge if their offices are closed and no one is monitoring the post for such documents.

CPR PD 6A, paragraph 4.1 states that to serve a claim form or other document by "fax or other electronic means", you must have prior written consent from the party being served or their solicitor indicating the fax number, email address or other electronic indication to which it must be sent. As most businesses are now implementing ‘work from home’ measures for their staff, it is likely to be sensible for parties to agree service by email, at least for the duration of the health emergency.

Extensions

A new Practice Direction PD51ZA was published in early April 2020 allowing parties to agree extensions to deadlines by written consent. It amends CPR 3.8 such that parties can now agree an extension for up to 56 days by written consent (i.e. without the need for court approval), rather than 28 days as was the case previously.

The new Practice Direction also provides that:

• any extension beyond 56 days requires the court's permission. An application for permission will be considered on the papers but any order made must, on application, be reconsidered at a hearing;
• in so far as compatible with the proper administration of justice, the court will take into account the impact of the COVID-19 pandemic when considering applications for the extension of time for compliance with directions, the adjournment of hearings, and applications for relief from sanctions.

Approach taken in recent cases at the Patents Court

In Conversant Wireless Licensing Sarl v Huawei Technologies Co Ltd [2020] 3 WLUK 354, 25 March 2020 the Court vacated the trial date and adjourned the trial due to COVID-19, because the alternative approach being proposed by the claimants was to conduct the trial largely on the papers. The Judge held that there were issues which required cross-examination and there were significant costs involved, so the most appropriate way to proceed would be to adjourn the trial.

In Heineken Supply Chain BV v Anheuser-Busch Inbev SA; Anheuser-Busch Inbev SA v Heineken UK Ltd [2020] EWHC 892 (Pat), 9 April 2020 the defendant applied for a two week extension of time to provide reply evidence, which if granted would postpone the trial date. The arguments used by the defendant included the difficulties its solicitors were facing in preparing reply evidence caused by the impossibility of face-to-face meetings, not being able to consider relevant documents when in the same room and the fact that one member of the solicitor’s team had fallen ill with COVID-19. The Court held that an extension at such a late stage would be hard to justify under normal circumstances, but in light of these factors caused by the COVID-19 crisis, the Judge awarded an extension of one week instead of two and held that the trial would proceed on the original timetable.

Illumina Cambridge Limited v Latvia MGI Tech SIA and others [2020] EWHC 730 (Pat), 25 March 2020 is an example of a hearing which ran smoothly via video link, demonstrating that at least interim hearings can be conducted remotely without suffering any negative impacts. It is worth nothing Birss J’s comments in the decision following this hearing:

“This judgment was given at a case management hearing conducted using a video conference system. No-one needed to be physically in the same location. The solicitors, counsel and court staff cooperated to ensure that the hearing went smoothly, and that the papers were all exchanged electronically.”

Courts of France

In response to the Health Emergency caused by COVID-19, the French civil (patent) courts have been largely put on hold, except for urgent matters. In others words, all hearings have been postponed and it is still to be seen how things will be resumed at the end of the emergency period.

Some measures have nevertheless been enacted.

Time extension in proceedings

Proceedings and formalities that should have been completed between 12 March 2020 and 24 June 2020 (one month after the current end of the public Health Emergency) will be considered as validly accomplished if done within the initial legal timeframe running from 24 June 2020. For example, a party which had one month to lodge an appeal from 10 March 2020 can validly lodge this appeal until 24 July 2020.

This extension is also applicable to the French Intellectual Property Office (INPI), and notably, for patents, the payment of annuities. However, the extension does not apply to time limits resulting from international agreements or European texts, such as the time limit to file an SPC application.

In the latest Government-related news, and especially the Prime Minister’s speech before the French Parliament on 28 April 2020, the possibility of an extension of the public Health Emergency period has been mentioned. The abovementioned time extensions in proceedings might then be extended further.

Service of documents and remote hearings

Although judicial officers’ offices (such as bailiffs) are currently closed to the public, the service of documents is still operated by these judicial officers either in person or through an electronic platform (SECURACT) already established prior to the Health Emergency period. Nevertheless, the use of this platform requires the consent of the recipient.

As far as civil (patent) hearings are concerned, the relevant judge may, by a decision not subject to appeal, decide that the hearing will be held remotely, notably by the means of videoconferences. Likewise, parties may exchange their pleadings and exhibits by any means as long as the judge can ensure that the adversarial process principles are respected.

Urgent proceedings

A claim can be lodged before the judge ruling in summary proceedings and expedited proceedings. However, the judge can dismiss such claims before the trial hearing if the claim is inadmissible or if there are no grounds for summary or expedited proceedings. The main reason for dismissal would be a lack of urgency.

Courts of Italy

Italy was the first European country to be hit by the COVID-19 health emergency, and the courts had to take quick measures to ensure that at least the urgent cases could proceed in a situation where it would not be physically possible to attend hearings. 

Hearings

Italian courts have been forced to postpone all hearings between 9 March 2020 to 11 May 2020, and put on hold most proceedings, except for urgent matters, such as preliminary injunction proceedings. However, if a judge considers it necessary and in the interests of the parties not to postpone a hearing, the court will organise a remote hearing by means of videoconference. If it is necessary for the parties to submit documents and/or briefs, the Italian judicial system already provides for electronic filing of court documents.

From 11 May 2020, the President of each Italian court will provide specific court guidelines for his/her court on how the judicial work should be carried out. For example, the President of the Court of Milan has issued a protocol according to which each judge will decide if it is necessary that the parties physically attend the hearing, or a remote hearing would be sufficient (such information should be provided by the Judge at least 7 days before the hearing date).

Time extension in proceedings

From 9 March 2020 until 11 May 2020, all terms concerning the fulfilment of proceedings and formalities are suspended and can be validly completed within the new deadline which will be re-calculated starting from 12 May 2020. However, a party is free to start new litigation as long as it is done through the electronic platform. Obviously, all terms for the defendants to respond or appear before the court or for other parties interested in joining the proceedings are subject to the above time extension.

The Italian Trademark and Patent Office (UIBM) has suspended all terms from 23 February 2020 until 15 May 2020 and have accordingly provided for a time extension for all deadlines falling within this period (e.g., if a trademark opposition should have been filed within 28 February 2020, i.e. 5 days into the emergency period, the new deadline would be 20 May 2020, i.e. 5 days after the end of the emergency period).

The European Patent Office (EPO)

The EPO recently issued a decision and accompanying notice dated 14 April 2020 in which it announced that it will conduct a pilot project for oral proceedings by videoconference before the opposition division (“ODs”). The pilot project will extend to all oral proceedings before the OD that are scheduled to take place after the entry into force of the present decision, i.e. 4 May 2020, and will run until 30 April 2021.

Under the notice, oral proceedings before the OD may be held by videoconference at the discretion of the OD and with the agreement of all parties, but the videoconferencing option is not available if the OD has decided to take evidence or if there are other serious reasons for not using it. 

The notice also sets out the practicalities of attending the video hearings.