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Expert evidence divergence raises questions for UPC



James Nurton


A conference this week highlighted the different approaches that courts take to expert evidence in Europe. Will Europe’s new unified patent court (UPC) make things simpler, or more complicated?

UCL-IBIL and Taylor Wessing jointly organised a conference on "The role of experts and scientific advisors in patent litigation around the European Union" this week. With lawyers, judges and expert witnesses all attending, it was eye-opening – and not only because we learned quite how much money academics can make from doing expert witness work.

During the morning, there was a tour of Europe with presentations on how courts treat expert witnesses in Denmark, France, Germany, Italy, the Netherlands, Spain, Sweden, Switzerland and the UK. If, like me, you thought that there is a pretty clear divide between the common law systems of the US and UK (lots of expert witnesses, cross-examination) and the civil law continental approach (fewer experts, paper-based proceedings) this would have disillusioned you.

Questions such as whether expert witnesses can be called by the parties, whether court-appointed experts can be used, what experts are allowed to comment on, when reports are made available, whether there is cross-examination and how much is allowed, whether experts should always be independent of the parties (something the newly appointed Mr Justice Birss questioned) and how many experts are too many are treated differently in every jurisdiction. In many cases, the differences are not only practical but philosophical: how do you best deliver justice?

Also discussed were emerging trends such as hot tubbing (practised in Australia, introduced in the UK and tested in the Netherlands) where competing experts are asked to fight it out between themselves, and the use of scientific advisers, such as Professor Michael Yudkin (left), who spoke about how he spent four weeks educating the UK’s law lords in biochemistry before they heard the Kirin-Amgen case in 2004. (Yudkin told me the five judges were some of the best students he has ever taught.)

The use of experts raises many practical issues about costs, efficiency and fairness, and there is also the risk that they can become corrupted by close association with legal teams, or legal game-playing. Other questions raised on Tuesday included: are there human rights concerns where the judge is relying on a scientific adviser whose advice and opinions are not available to the parties? And is there a risk of conflicts/denial of justice where the court includes a part-time judge who in his regular life is a lawyer or patent attorney (as is common in Switzerland, for example)?

Hot Tub Time Machine
Hot Tub Time Machine - the future of expert evidence?

It would be nice to think that these divergent practices will be harmonised when the unified patent court comes into effect. Don’t count on it. While the proceedings are likely to be largely paper-based, Article 53 of the UPC Agreement provides for "opinions by experts" to be included as evidence, and says that questioning of them should be "limited to what is necessary". Meanwhile, Article 57 says the Court "may at any time appoint court experts in order to provide expertise for specific aspects of the case" and adds that "[e]xpert advice given to the Court by court experts shall be made available to the parties which shall have the possibility to comment on it".

The latest draft of the Rules of Procedure provides a bit more guidance (the relevant rules are 175 to 181 for parties’ witnesses and 185 to 188 for court-appointed experts) but there is a lot of leeway for judges regarding the amount and type of expert evidence and the extent of cross-examination allowed.

It’s likely therefore that established national practices regarding the use and limiting of experts will survive, particularly in the local and regional divisions. That’s another reason why forum shopping in the EU is likely to grow, rather than diminish, once the UPC comes into effect.

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