CHAPTER IV TAKING AND CONSERVATION OF EVIDENCE
1. Taking of evidence by the departments of the EPO
1.1 General remarks
Formal taking of evidence in accordance with Rule 72(1) will occur mainly in opposition proceedings and hardly ever before the Examining Division. The following Sections of this Chapter are therefore based primarily on opposition proceedings. However, they also apply mutatis mutandis to other proceedings and particularly to substantive examination.
»»Art. 117
»»Rule 72
1.2 Means of evidence
»»Art. 117(1)
The party or parties may at any time during proceedings submit evidence in support of alleged facts (see III, 5, X, 1.2, D-IV, 5.3 and 5.4, D-VI, 3). This should be done at the earliest opportunity. When such evidence is such as should have been put forward at an earlier stage it is for the competent department to consider whether it is expedient (see VI, 2) to allow the new evidence to be introduced.
It would generally be desirable for a party to produce evidence in respect of all the facts alleged in support of his case, in order, for example, to show whether a particular technique was generally known to industry or whether there was any prejudice against a particular technique.
Facts adduced by a party will, however, normally be deemed true, even without supporting evidence, if it is clear that no doubts exist concerning them, if they do not contradict one another or if no objection is raised. In such cases the facts need not be supported by evidence.
There will however be occasions, particularly in opposition proceedings, in which the arguments of the party or parties must be supported by evidence. This will for example be the case where reference is made to prior art, for instance in the form of an oral description, a use or perhaps a company publication and there is some doubt as to whether, and if so when, such prior art was made available to the public.
The means of evidence are (non-exhaustively) listed in Art. 117:
-
production of documents
- hearing the parties
- hearing witnesses
- sworn statements in writing
-
requests for information, for instance from a publisher concerning the date of publication of a book
-
opinions by experts (see IV, 1.8.1)
-
inspection.
The most appropriate way of obtaining evidence in the individual case depends on the facts which have to be proven and on the availability of the evidence. To prove prior use in an opposition the opponent usually offers as evidence the production of documents, the hearing of witnesses or parties, or he presents sworn statements in writing. It is at the Opposition Division's discretion to evaluate this evidence, there are no fixed rules as to how any category of evidence should be judged (for the evaluation of evidence, see IV, 4).
If the documents produced (e.g. patent documents) leave no doubt as to their contents and date of availability to the public and are more relevant for the patent in suit than other evidence offered, reasons of procedural efficiency may lead the Opposition Division to not pursue the other evidence at first.
If the testimony of a witness is offered, the Opposition Division may decide to hear this person in order to verify the facts for which this witness is brought forward, e.g. the prior use of the claimed product in an undertaking or the existence of an obligation to secrecy. For adequate substantiation the notice of opposition should make clear these facts, as witnesses are meant to serve for corroboration of facts brought forward, not for supplying these facts in place of the opponent. The above applies likewise to hearing the parties (see also IV, 1.6).
Whether a written statement ("affidavit") is made under oath or not is only one of the criteria applied by the Opposition Division in its evaluation of the evidence adduced. Apart from its relevance for the case, other criteria are the relationship between the person making the statement and the parties to the proceedings, the personal interest of that person, the context in which the statement was made, etc. Such a statement does not go beyond its literal content and does not allow the Opposition Division to assess the associated or background factors. If the alleged facts are contested by the other party, the Opposition Division does not generally base its decision on such a statement, but summons the person making the statement as a witness, if so offered by the party. The ensuing hearing of the witness allows the Opposition Division and the parties to put questions to the witness and thus enables the Opposition Division to establish the facts on the basis of that person's testimony. If that person is not offered as a witness the Opposition Division will not pursue this evidence further.
Inspection will enable direct observations to be made and direct impressions to be formed of the object or process concerned. It may, for example, involve the demonstration of a product or process requested by the applicant or proprietor of the patent to substantiate the method of operation of the subject-matter of the patent where this is disputed by the Examining or Opposition Division.
1.3 Taking of evidence in substantive examination and opposition proceedings
»»Art. 117(2)
The department responsible for the taking of evidence in the form of a hearing of witnesses, parties and experts will, in substantive examination and opposition proceedings, be the Division before which the taking of evidence as part of oral proceedings would normally take place. However "the Division may commission one of its members to examine the evidence adduced."
Generally he will be the primary examiner under Art. 18(2) or Art. 19(2). A member may, for example, be commissioned pursuant to Art. 117(2), for the purposes of an inspection, such as in the form of a demonstration of a process or the investigation of an object, particularly in undertakings located far away.
A member may also be commissioned to attend a court hearing pursuant to Art. 117(6), and put questions to the witnesses, parties and experts.
1.4 Order to take evidence
»»Rule 72(1)
"Where the competent department of the EPO considers it necessary to hear the oral evidence of parties, witnesses or experts or to carry out an inspection, it shall make a decision to this end (order to take evidence), setting out the investigation which it intends to carry out, relevant facts to be proved and the date, time and place of the investigation."
If oral evidence of witnesses and experts is requested by a party but the witnesses and experts are not simultaneously named, the party is requested, either prior to the issue of the order to take evidence or in the order itself, to make known within a specified time limit the names and addresses of the witnesses and experts whom it wishes to be heard. The time limit to be computed in accordance with Rule 84 will normally be two months, since the party concerned will normally know beforehand whom he wishes to be heard as a witness or expert.
The order to take evidence must be notified to the parties. It may be appealed only together with the final decision, unless it allows separate appeal (see X, 6).
»»Art. 119
1.5 Summoning of parties, witnesses and experts
The parties, witnesses and experts to be heard must be invited to appear to give evidence on the date fixed. The summons must be notified. At least two months'
notice of a summons issued to a party, witness or expert to give evidence shall be given unless they agree to a shorter period. The summons shall contain:
»»Art. 117(3)(a)
»»Art. 119
»»Rule 72(2)
(i) an extract from the order to take evidence, indicating in particular he date, time and place of the investigation ordered and stating the facts regarding which parties, witnesses and experts are to be heard;
»»Rule 72(2)(a)
(ii) the names of the parties to the proceedings and particulars of the rights which the witnesses or experts may invoke (see IV, 1.10);
»»Rule 72(2)(b)
(iii) an indication that the party, witness or expert may request to be heard by the competent court of his country of residence and a requirement that he informs the EPO within a time limit to be fixed by the Office whether he is prepared to appear before it (see IV, 3.2.2(iii) and (iv)).
»»Rule 72(2)(c)
Even if evidence is not taken in oral proceedings, all parties to the proceedings "may attend an investigation". Parties not summoned should be informed thereof within the period laid down in Rule 72(2), together with a statement that they may attend.
»»Rule 72(4)
1.6 Hearing of parties, witnesses and experts
1.6.1 General remarks
Where the Examining or Opposition Division holds hearings for the purpose of taking evidence (see IV, 1.3) and if the case in question is expected to give rise to particular legal issues, it is advisable that the Division should be enlarged by the addition of a legally qualified examiner, if this is not already the case (see D-II, 2.2).
Where a hearing is held in connection with oral proceedings, the considerations set out in III, 8.2, 8.3, 8.8 and 8.9 are directly applicable, and where this is not the case they apply mutatis mutandis.
The hearing of an "expert"
in the sense of Art. 117(3) requires as a precondition a decision to take evidence (see IV, 1.4). This is something different from hearing oral submissions by a person accompanying the representative during oral proceedings, which can be allowed under the discretion of the Division (see Decision G 4/95, OJ 7/1996, 412) (see III, 8.5).
1.6.2 Witnesses and experts not summoned
»»Rule 74(2)
After opening the proceedings for the taking of evidence the official in charge of the taking of evidence, i.e. in substantive examination and opposition proceedings the Chairman of the Division concerned or the member commissioned for the taking of evidence, will determine whether any party requests that any other person present but not summoned should be heard. If a party makes such a request he should briefly state why and to what purpose the person concerned should give testimony. The department in question will then decide on whether or not to grant the request (for the admission of facts or evidence not filed in due time see VI, 2).
1.6.3 Guidance to persons heard
»»Rule 72(3)
"Before a party, witness or expert may be heard, he shall be informed that the EPO may request the competent court in the country of residence of the person concerned to reexamine his evidence on oath or in an equally binding form."
1.6.4 Separate hearings
Normally each witness must be heard separately, i.e. any other witnesses
to be heard subsequently must not be present. This rule does not apply to
experts and to the parties. Witnesses whose statements conflict may be confronted
with one another i.e. each heard in turn in the presence of the other. The
same applies to experts.
1.6.5 Examination as to personal particulars
The hearing will begin by the person giving evidence being asked his given names, family name, age, occupation and address. Witnesses and experts must also be asked whether they are related by blood or marriage with any of the parties and whether they have a material interest in a particular party being successful in the proceedings.
1.6.6 Examination as to res gestae
The examination as to personal particulars will be followed by the examination as to res gestae. The person testifying should be instructed to give a full and logical account of what he knows concerning the subject-matter of the hearing. Further questions may have to be put to clarify and supplement statements and to establish on what the knowledge of the person testifying is based. Such questions may be put by the member commissioned for the taking of evidence, where applicable, the Chairman or any other member of the department concerned. As regards the entitlement of other members of the Division to put questions, see III, 8.8. When formulating questions the same considerations apply as for the parties (see 1.6.7).
1.6.7 Entitlement of parties to put questions at hearings
»»Rule 72(4)
"The parties may put relevant questions to the testifying parties, witnesses and experts"
including, e.g. in opposition proceedings, witnesses and experts testifying on behalf of other parties. The official in charge of the taking of evidence will determine at what point in the proceedings such questions may be put.
Any doubts on the part of the competent department, e.g. the Opposition Division, or a party as to the admissibility of a question must be settled by the competent department. "Leading questions", i.e. questions which already contain the statement which one would like to hear from the witness, practically only requiring him to answer by "yes"
or "no", should be avoided, because they do not allow to properly establish the witness'
own recollection of the facts. Questions shall further not be directed to facts which require no further discussion, which are in no way relevant to the subject-matter for which the taking of evidence has been ordered, or if they aim at establishing facts in respect of which no evidence has been offered. A decision to reject a question cannot be challenged. As regards the entitlement of other members of the Division to put questions, see III, 8.8.
1.7 Minutes of taking of evidence
»»Rule 76
"Minutes of the taking of evidence shall be drawn up"
as described in III, 10, subject to the following qualifications:
The minutes of the taking of evidence must, in addition to the essentials of the taking of evidence, also record as comprehensively as possible (almost verbatim as far as the essential points are concerned) the testimony of the parties, witnesses or experts.
The minutes will normally be taken down by a member of the competent department carrying out the taking of evidence. The most efficient way of noting testimony is by way of dictation on to a dictating machine, in the process of which the person hearing the evidence will summarize the testimony in small sections, taking into account any objections raised by the person being heard, and dictate it in this form on to a dictating machine. If the dictated passage does not correspond in full to his testimony, the person being heard should raise any objections immediately. This should be pointed out to him at the beginning of his testimony. At the end of his testimony, he will be asked to approve the dictated minutes, which he will have listened to as they were dictated. His approval or any objections should be included in the dictated text. The dictated minutes are typed out and the parties are provided with a copy as soon as possible.
»»Rule 76(2)
Where the taking of evidence includes an inspection, the minutes must record, in addition to the essentials of the proceedings, the results of the inspection.
In addition the taking of evidence as well as oral proceedings (see III, 10.1) may be recorded on sound recording apparatus.
1.8 Commissioning of experts
»»Rule 73(1)
1.8.1 Decision on the form of the report
If the competent department decides of its own motion to obtain an expert report (D-VI, 1, 6th paragraph) it will have to decide in what form it should be submitted by the expert whom it appoints. The report should be drawn up in written form only in cases where the competent department considers that this form is adequate in view of the content of the report and provided that the parties agree to this arrangement. As a rule, in addition to submitting a written report and introducing it orally, the expert will also be heard (see IV, 1.6).
"A copy of the report shall be submitted to the parties."
The copy will be produced by the EPO.
»»Rule 73(3)
1.8.2 Objection to an expert
»»Rule 73(4)
The parties may object to an expert. Therefore, before commissioning an expert to make a report, the competent department should inform the parties of the expert whom it intends to ask to draw up a report and of the subject-matter of the report. The communication to the parties should state a time limit within which objections to the expert may be made. If the parties do object to an expert, the competent department will decide on the objection.
1.8.3 Terms of reference of the expert
»»Rule 73(2)
"The terms of reference of the expert shall include: a precise description of his task, the time limit laid down for the submission of his report, the names of the parties to the proceedings and particulars of the rights which he may invoke under the provisions of Rule 74(2) to (4)"
(Regarding travel and subsistence expenses and his fees, see IV, 1.10).
1.9 Costs arising from oral proceedings or taking of evidence
As a rule, each party to proceedings before the EPO meets the costs he has incurred. This principle notwithstanding, the competent body in the opposition proceedings may for reasons of equity (cf. D-IX, 1.4) decide to apportion in some other way the costs arising for the parties in respect of oral proceedings or taking of evidence (cf. D-IX, 1) and the costs arising for the EPO in respect of witnesses and experts (cf. IV, 1.10). The competent body may make the taking of evidence "conditional upon deposit with it" (the EPO) "by the party who requested the evidence to be taken, of a sum the amount of which shall be fixed by reference to an estimate of the costs."
This procedure should be applied where at the request of a party to grant or opposition proceedings evidence is to be taken by hearing witnesses or seeking an expert opinion, unless no costs will arise because the witness or expert has waived his right to indemnification. If the party requesting evidence to be taken does not comply with the requirement of making such a deposit the evidence need not be taken. In opposition proceedings the party requesting the evidence bears the costs of indemnifying witnesses or experts, unless for reasons of equity in individual cases other arrangements are made for the apportionment of costs under Art. 104(1) in conjunction with Rule 63. Any shortfall between the deposit lodged and the amounts payable by the Office under Rule 74(4), 2nd sentence, is fixed by the Office of its own motion. Any unused amount of the deposit lodged is refunded. The Office's internal costs arising through oral proceedings or taking of evidence, e.g. any associated staff travel and subsistence costs, are to be met by the Office itself.
»»Art. 104(1)
»»Rule 74(1)
»»Art. 104(2)
1.10 Entitlements of witnesses and experts
»»Rule 74(2)
1.10.1 Expenses for travel and subsistence
"Witnesses and experts who are summoned by and appear before the EPO shall be entitled to appropriate reimbursement", by the EPO, "of expenses for travel and subsistence" (see IV, 1.10.3). This applies even if the witnesses or experts are not heard, e.g. where evidence is to be produced concerning an alleged prior use and shortly before the taking of evidence such prior use is substantiated by a document already published. Witnesses and experts may be granted an advance on their expenses for travel and subsistence. Witnesses and experts who appear before the EPO without being summoned by it but are heard as witnesses or experts will also be entitled to appropriate reimbursement of expenses for travel and subsistence.
1.10.2 Loss of earnings, fees
»»Rule 74(3)
"Witnesses entitled to reimbursement" of travel and subsistence expenses "shall also be entitled to appropriate compensation", by the EPO, "for loss of earnings, and experts to fees" from the EPO "for their work" (see IV, 1.10.3). "These payments shall be made to the witnesses and experts after they have fulfilled their duties or tasks."
1.10.3 Details of the entitlements of witnesses and experts
»»Rule 74(4)
"The Administrative Council" of the European Patent Organisation has laid
"down the details" governing the entitlements of witnesses and experts set
out under IV, 1.10.1 and 1.10.2, see document CA/D 5/77 (published in OJ
3/1983, 100). "Payment of amounts due shall be made by the EPO."
2. Conservation of evidence
2.1 Requirements
»»Rule 75(1)
"On request, the EPO may, without delay, hear oral evidence or conduct inspections, with a view to conserving evidence of facts liable to affect a decision, where there is reason to fear that it might subsequently become more difficult or even impossible to take evidence." This could for example be the case where an important witness is about to emigrate to a distant country or where perishable matter, e.g. a food-stuff, is adduced as involving a use made accessible to the public.
2.2 Request for the conservation of evidence
»»Rule 75(2)
The request for the conservation of evidence must contain:
(i) the name and address of the person filing the request and the State in which his residence or principal place of business is located, in accordance with the provisions of Rule 26(2)(c);
»»Rule 75(2)(a)
(ii) sufficient identification of the European patent application or European patent in question;
»»Rule 75(2)(b)
(iii) the designation of the facts in respect of which evidence is to be taken;
»»Rule 75(2)(c)
(iv) particulars of the way in which evidence is to be taken;
»»Rule 75(2)(d)
(v) a statement establishing a prima facie case for fearing that it might subsequently become more difficult or impossible to take evidence.
»»Rule 75(2)(e)
"The request shall not be deemed to have been filed until the fee for conservation of evidence has been paid."
»»Rule 75(3)
2.3 Competence
"The decision on the request and any resulting taking of evidence shall be incumbent upon the department of the EPO required to take the decision liable to be affected by the facts to be established."
»»Rule 75(4)
Responsibility for the decision and the taking of evidence will therefore normally rest with:
(i) the Examining Division, from the date of filing until the date of the decision on the granting of the patent;
(ii) the Opposition Division, from the latter date until expiry of the time allowed for filing notice of opposition and during opposition proceedings, and
(iii) the Board of Appeal, from the date of a final decision by the Opposition Division until it becomes legally binding or while appeal proceedings are pending.
2.4 Decision on the request and the taking of evidence
The competent department must decide upon the request without delay. If it grants the request it must also immediately make a decision on the taking of evidence.
»»Rule 75(1)
»»Rule 72(1)
"The provisions with regard to the taking of evidence in proceedings before the EPO shall be applicable."
»»Rule 75(4)
"The date on which the measures are to be taken"
must therefore "be communicated to the applicant for or proprietor of the patent"
and the other parties "in sufficient time to allow them to attend. They may ask relevant questions."
»»Rule 75(1)
»»Rule 72(2), (4)
3. Taking of evidence by courts or authorities of the Contracting States
3.1 Legal co-operation
"Upon receipt of letters rogatory from the EPO, the courts or other competent authorities of Contracting States shall undertake, on behalf of that Office and within the limits of their jurisdiction, any necessary enquiries."
»»Art. 131(2)
3.2 Means of giving or taking evidence
3.2.1 Taking of evidence on oath or in equally binding form
»»Art. 117(6)
The principle case where evidence is taken by a competent court will be the hearing of parties, witnesses or experts. In such instances the competent department "may request the competent court to take the evidence on oath or in an equally binding form".
3.2.2 Cases where evidence is taken in this manner
The competent department will, if necessary, request a competent court to take evidence, where appropriate under oath, where:
»»Art. 117(6)
(i) the taking of evidence by that department would entail disproportionately high travelling costs or the taking of evidence by the competent court appears to be appropriate on other grounds,
(ii) the competent department considers it advisable for the evidence of a party, witness or expert it has heard to be re-examined under oath or in an equally binding form (see IV, 3.2.1),
»»Art. 117(5)
(iii) there has been no reply to the summons by the expiry of a period fixed by the competent department in the summons (see IV, 1.5(iii)), or
»»Art. 117(4)
(iv) a party, witness or expert who has been summoned before that department requests the latter in accordance with IV, 1.5(iii), to allow his evidence to be heard by a competent court in his country of residence. If the party, witness or expert simply refuses to be heard by the responsible Division, he should be notified that the competent national court will have the relevant national legal possibilities to oblige him to appear and to testify.
»»Art. 117(4)
»»Rule 99(3)
3.3 Letters rogatory
"The EPO shall draw up letters rogatory in the language of the competent authority or shall attach to such letters rogatory a translation into the language of that authority".
»»Rule 99(2)
Letters rogatory should be addressed to the central authority designated by the Contracting State.
»»Rule 99(1)
3.4 Procedures before the competent authority
"The EPO shall be informed of the time when, and the place where, the enquiry is to take place and shall inform the parties, witnesses and experts concerned."
»»Rule 99(5)
"If so requested by the EPO, the competent authority shall permit the attendance of members of the department concerned and allow them to question any person giving evidence either directly or through the competent authority."
Whether the parties may put questions or not will depend on the laws of the Contracting States concerned.
»»Art. 117(6)
»»Rule 99(6)
3.5 Costs of taking evidence
»»Rule 99(7)
"The execution of letters rogatory shall not give rise to any reimbursement of fees or costs of any nature. Nevertheless, the State in which letters rogatory are executed has the right to require the European Patent Organisation to reimburse any fees paid to experts and interpreters and the costs incurred"
as a result of the attendance of members of the competent department when evidence is taken.
3.6 Taking of evidence by parties
»»Rule 99(8)
"If the law applied by the competent authority obliges the parties to secure evidence and the authority is not able itself to execute the letters rogatory, that authority may, with the consent of the competent department, appoint a suitable person to do so. When seeking the consent of the department concerned, the competent authority shall indicate the approximate costs which would result from this procedure. If the competent department gives its consent, the European Patent Organisation shall reimburse any costs incurred; without such consent, the Organisation shall not be liable for such costs."
4. Evaluation of evidence
4.1 General remarks
The competent department must examine whether the conclusions drawn by the parties from the evidence and facts are correct and give grounds for the conclusions it itself freely arrives at on the basis of the situation as a whole.
The state of the art to be taken into consideration in individual cases for the purposes of Art. 54 is that laid down in C-IV, 5, 6 and 8, and D-V, 3.1 and 3.2.
The competent department is not obliged to take into consideration any facts or evidence not presented by the parties in due time, except within the limits specified in VI, 2.
4.2 Evaluation of the testimony of a witness
After the witnesses have been heard, the party or parties must be given an opportunity of making observations. The observations may be made either in oral proceedings following the taking of evidence or exceptionally in writing after transmission of the minutes of the taking of evidence. The decision on this matter will rest with the competent department. The parties may file requests accordingly.
Only when this has been done should the competent department proceed to evaluate the evidence. Where a witness's testimony which is crucial to the decision has been challenged by a party but the department regards it as credible, or where a witness's oral or written testimony is disregarded in its decision as being not credible, the department concerned must state the grounds for its view in its decision.
In evaluating a witness's oral or written testimony, special attention should be paid to the following:
(i) What is important is what a witness can relate concerning the points at issue on the basis of his own knowledge or views, and whether he has practical experience in the field in question. Second-hand assertions based on something heard from third parties are for the most part worthless on their own. It is also important from the point of view of the evaluation whether the witness was involved in the event himself or only knows of it as an observer or listener.
(ii) In the event of long intervals of time (several years) between the event in question and the testimony, it should be borne in mind that most people's power of recall is limited without the support of documentary evidence.
(iii) Where testimony appears to conflict the texts of the statements concerned should be closely compared with one another. Apparent contradiction in the testimony of witnesses may sometimes be resolved in this way. For example, a close examination of apparently contradictory statements by witnesses as to whether a substance X was commonly used for a particular purpose may show that there is in fact no contradiction at all, in that while one witness was saying specifically that substance X was not used for that particular purpose, the other witness was saying no more than that substances like X or that a certain class of substances to which X belonged, were commonly used for this particular purpose without intending to make any statement regarding substance X itself.
4.3 Evaluation of the testimony of parties
Oral or written evidence given by parties or their refusal to give evidence should be evaluated in the light of their special interest in the matter. Because of their special interest, the testimony of parties should possibly not be evaluated on the same level as that of neutral witnesses. This applies above all where parties have been present when witnesses have been heard and have ascertained the attitude of the competent department. The considerations set out in IV, 4.2 (Evaluation of the testimony of a witness) apply mutatis mutandis.
4.4 Evaluation of an expert opinion
The competent department must examine whether the grounds on which an expert opinion is based are convincing. Notwithstanding its discretion in the evaluation of evidence, it may not disregard an expert opinion in the absence of grounds based on adequate specialist knowledge of its own or of another expert, irrespective of whether the latter expert is an independent expert commissioned under Rule 73 or an expert who testifies at the request of one of the parties.
4.5 Evaluation of an inspection
In the case of a demonstration a specific test program
under specific conditions should be agreed in advance. During the demonstration itself care must be taken to ensure that the characteristics or conditions of operation claimed for the invention are complied with. Where an invention is compared under test with an item forming part of the state of the art, as far as possible the same or comparable test conditions must be applied to both.
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