The Legal Framework of the Order to preserve evidence (Saisie) before the UPC

Although the Agreement on a Unified Patent Court (“UPC Agreement”) provides a broad and non-limited list of means to give and obtain evidence (Article 59) it seems to give a key role to the order to preserve evidence provided by Article 60 that aims at granting prompt and effective provisional measures to preserve relevant evidence in respect of the alleged infringement.

Rules of procedure of the Unified Patent Court No.192 to 198 (“Rules of Procedure”), provide with further details relating to the requirements and implementation of these measures for preserving evidence.

In accordance with Article 7 of Directive 2004/48/EC of 29 April 2004 on the enforcement of Intellectual Property Rights, these measures can be requested and granted either before the commencement or in course of proceedings on the merits of the case, and are subject to the protection of confidential information.

The measures that can be granted on this basis may not only include the inspection of premises (Article 60(3) of the Agreement), the detailed description of the allegedly infringing products but also the physical seizure of samples, infringing products and materials used in the production and/or distribution of those products, as well as the documents relating thereto (Article 60(2) of the Agreement).

Unless otherwise specified by the Order, the outcome of the ordered measures may only be used in the proceedings on the merits of the case (Rule 196.2).

The order shall be revoked by the Court, without prejudice to the damages which may be claimed if, within a time period not exceeding 31 calendar days or 20 working days, whichever is the longer from the date specified in the Court’s order, the applicant does not start proceedings on the merits of the case before the Court (Rule 198).

The order to preserve evidence provided by the UPC Agreement has thus been described by legal commentators as close to the French saisie-contrefaçon and this proximity is clearly acknowledged by the Preparatory Committee that entitled the corresponding chapter 4 of the Rules of Procedure “Order to Preserve Evidence (Saisie) and Order for Inspection”.

Applicant for measure to preserve evidence shall be a party within the meaning of Article 47 of the UPC Agreement (Rule 192.1) and can thus be in particular the patentee, the exclusive licensee (unless the license exclude this right) upon prior notice to the patentee, and the non-exclusive licensee, provided that the license explicitly grants this right and prior notice to the patentee.

If lodged before any proceedings on the merits, the request for order shall be filed with the division where the applicant intends to start proceedings on the merits (Rule 192.1) (i.e. the central division if competent or the local / regional division having jurisdiction on the territory either where the infringement is said to occur, or where the alleged infringer is located, according to Article 33 of the Agreement).

If lodged in the course of proceedings on the merits, the request for order shall be filed with the division where the applicant has started the proceedings on the merits (Rule 192.1).

Subject to explaining the basis of such request and to disclosing any known fact which might influence the court in its decision, the measures can be ordered without hearing the other party (Rule 192.3). Article 60(5) provides examples of such cases and mentions in particular the facts that any delay is likely to cause irreparable harm to the proprietor of the patent, or where there is a demonstrable risk of evidence being destroyed.

In addition to detailed information relating to the applicant, its rights, the invoked patent, the existence of parallel, past or pending proceedings, the applicant shall provide the Court with indications of the measures requested, the accurate details on the party to be visited / seized and the exact location where the evidence shall be sought. A non-limited list of measures that can be ordered by the Court is provided by the Rule 196.1.

The Court may also order the applicant to provide adequate security for the legal costs and other expenses and compensation for any injury incurred or likely to be incurred by the defendant which the applicant may be liable to bear (Rule 196.6).

Rule 192.2 further details how the application for order shall be substantiated, and mentions in particular the facts and evidence relied on in support of the Application. This rule shall be understood in view of Article 60(1) of the Agreement that provides, in compliance with Directive 2004/48/EC of 29 April 2004, that the applicant shall present “reasonably available evidence to support the claim that the patent has been infringed or is about to be infringed”. The case law of the Unitary Patent Court in relation with the extent of the requirement to provide evidence of the alleged infringement will be awaited with high interest, in particular in France, since this has been extensively debated before the French Courts.

Unless an extreme urgency is demonstrated, the application for order shall be filed with the Registry that conducts a formalities examination (Rule 193). Otherwise, the applicant may apply without formalities for an order to preserve evidence to the standing judge (Rule 194.4).

Taking into account the urgency of the action, the reasons for not hearing the defendant and the probability that evidence may be destroyed or no more available, the Court may grant the order either with or without an oral hearing to hear the applicant (Rule 194).

Additional options are available for the Court that can inform the defendant of the application and invite him to lodge the objections he may have against the Application (Rule 194.1). In such event, the Court will first give the applicant the possibility to withdraw the Application that will remain confidential (Rule 194.5).

If the order is granted, in writing and in a very short period of time, the operations shall be conducted by a professional person or expert, who guarantees expertise, independence and impartiality, which includes independent patent attorneys, experts and/ or bailiff when appropriate and allowed under applicable national law, bearing in mind that the applicant and/or its employee shall not be present (Rule 196.4 and 196.5).

The order can be appealed by any unsuccessful party before the Court of Appeal within 15 calendar days of the notification of the order to the applicant (Rules 196.7 and 220).

Although the Agreement on a Unified Patent Court (“UPC Agreement”) provides a broad and non-limited list of means to give and obtain evidence (Article 59) it seems to give a key role to the order to preserve evidence provided by Article 60 that aims at granting prompt and effective provisional measures to preserve relevant evidence in respect of the alleged infringement.

Rules of procedure of the Unified Patent Court No.192 to 198 (“Rules of Procedure”), provide with further details relating to the requirements and implementation of these measures for preserving evidence.

In accordance with Article 7 of Directive 2004/48/EC of 29 April 2004 on the enforcement of Intellectual Property Rights, these measures can be requested and granted either before the commencement or in course of proceedings on the merits of the case, and are subject to the protection of confidential information.

The measures that can be granted on this basis may not only include the inspection of premises (Article 60(3) of the Agreement), the detailed description of the allegedly infringing products but also the physical seizure of samples, infringing products and materials used in the production and/or distribution of those products, as well as the documents relating thereto (Article 60(2) of the Agreement).

Unless otherwise specified by the Order, the outcome of the ordered measures may only be used in the proceedings on the merits of the case (Rule 196.2).

The order shall be revoked by the Court, without prejudice to the damages which may be claimed if, within a time period not exceeding 31 calendar days or 20 working days, whichever is the longer from the date specified in the Court’s order, the applicant does not start proceedings on the merits of the case before the Court (Rule 198).

The order to preserve evidence provided by the UPC Agreement has thus been described by legal commentators as close to the French saisie-contrefaçon and this proximity is clearly acknowledged by the Preparatory Committee that entitled the corresponding chapter 4 of the Rules of Procedure “Order to Preserve Evidence (Saisie) and Order for Inspection”.

Applicant for measure to preserve evidence shall be a party within the meaning of Article 47 of the UPC Agreement (Rule 192.1) and can thus be in particular the patentee, the exclusive licensee (unless the license exclude this right) upon prior notice to the patentee, and the non-exclusive licensee, provided that the license explicitly grants this right and prior notice to the patentee.

If lodged before any proceedings on the merits, the request for order shall be filed with the division where the applicant intends to start proceedings on the merits (Rule 192.1) (i.e. the central division if competent or the local / regional division having jurisdiction on the territory either where the infringement is said to occur, or where the alleged infringer is located, according to Article 33 of the Agreement).

If lodged in the course of proceedings on the merits, the request for order shall be filed with the division where the applicant has started the proceedings on the merits (Rule 192.1).

Subject to explaining the basis of such request and to disclosing any known fact which might influence the court in its decision, the measures can be ordered without hearing the other party (Rule 192.3). Article 60(5) provides examples of such cases and mentions in particular the facts that any delay is likely to cause irreparable harm to the proprietor of the patent, or where there is a demonstrable risk of evidence being destroyed.

In addition to detailed information relating to the applicant, its rights, the invoked patent, the existence of parallel, past or pending proceedings, the applicant shall provide the Court with indications of the measures requested, the accurate details on the party to be visited / seized and the exact location where the evidence shall be sought. A non-limited list of measures that can be ordered by the Court is provided by the Rule 196.1.

The Court may also order the applicant to provide adequate security for the legal costs and other expenses and compensation for any injury incurred or likely to be incurred by the defendant which the applicant may be liable to bear (Rule 196.6).

Rule 192.2 further details how the application for order shall be substantiated, and mentions in particular the facts and evidence relied on in support of the Application. This rule shall be understood in view of Article 60(1) of the Agreement that provides, in compliance with Directive 2004/48/EC of 29 April 2004, that the applicant shall present “reasonably available evidence to support the claim that the patent has been infringed or is about to be infringed”. The case law of the Unitary Patent Court in relation with the extent of the requirement to provide evidence of the alleged infringement will be awaited with high interest, in particular in France, since this has been extensively debated before the French Courts.

Unless an extreme urgency is demonstrated, the application for order shall be filed with the Registry that conducts a formalities examination (Rule 193). Otherwise, the applicant may apply without formalities for an order to preserve evidence to the standing judge (Rule 194.4).

Taking into account the urgency of the action, the reasons for not hearing the defendant and the probability that evidence may be destroyed or no more available, the Court may grant the order either with or without an oral hearing to hear the applicant (Rule 194).

Additional options are available for the Court that can inform the defendant of the application and invite him to lodge the objections he may have against the Application (Rule 194.1). In such event, the Court will first give the applicant the possibility to withdraw the Application that will remain confidential (Rule 194.5).

If the order is granted, in writing and in a very short period of time, the operations shall be conducted by a professional person or expert, who guarantees expertise, independence and impartiality, which includes independent patent attorneys, experts and/ or bailiff when appropriate and allowed under applicable national law, bearing in mind that the applicant and/or its employee shall not be present (Rule 196.4 and 196.5).

The order can be appealed by any unsuccessful party before the Court of Appeal within 15 calendar days of the notification of the order to the applicant (Rules 196.7 and 220).

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