Evidence preservation before the UPC

Article 60 allows the Court to order prompt and effective measures to preserve evidence relating to an alleged infringement, subject to the protection of confidential information. Those measures may take the form of a detailed description, with or without the taking of samples, or the physical seizure of the allegedly infringing goods and, where appropriate, of the materials and implements used. The Court may also order the inspection of premises.

The application is governed by Rule 194, which sets its content: the patent relied upon, the facts alleged, the evidence already available, the measures sought and the reasons why they are necessary. The rigour of that drafting determines everything else, as under French law.

The ex parte character is the exception

That is the most important divergence. The French saisie-contrefaçon is always ordered ex parte. Before the Unified Patent Court, hearing the defendant first is the principle. The ex parte measure is reserved for cases where delay is likely to cause irreparable harm to the proprietor or where there is a demonstrable risk of evidence being destroyed. An applicant counting on surprise must therefore justify it, and is never certain of obtaining it.

Who attends the operations

The composition of the team carrying out the measure does not follow the same rules as in France, where the applicant’s usual patent attorney may assist the judicial officer. That point, technical in appearance, decides in practice the quality of what will be described and taken away: reading the patent during the operations distinguishes a useful description from a mere inventory.

Proportionality applies twice

Article 60 already makes the measure conditional on reasonably available evidence, and Article 62 requires the Court to weigh the interests of the parties. The proportionality test therefore operates at two levels, where French law concentrates it on the scope of the measures authorised. The result is a more tightly framed procedure, more costly and, to date, less predictable.

Practice has settled case by case. We followed the first seizure orders made by the Unified Patent Court, the Oerlikon case in Italy, the C-Kore case before the Paris Local Division, then the first appeal against a seizure order. On compelled production of evidence, the order made in Huawei v Netgear calls for a separate reading.

The measure before the Unified Patent Court is the natural choice when the action on the merits will be brought there: the evidence is gathered within the procedural framework that will assess it, and its admissibility is not in doubt. It is also the natural choice when the infringement is spread across several participating States and a single measure is preferable to several national proceedings.

In other cases (evidence intended for proceedings outside Europe, France as the main territory of the infringement, a need for surprise) the French saisie remains the safer instrument. The full reasoning is set out in our analysis of the choice between a French seizure and a UPC measure.

• Legal basis: Article 60 of the Agreement on a Unified Patent Court, implemented by Rule 194 of the Rules of Procedure.
• Hearing both sides is the rule. An order made without hearing the defendant is an exception that must be justified.
• The proportionality test operates at two levels, Articles 60 and 62.
• The measure is chiefly justified where the action on the merits will be brought before the Unified Patent Court.
• As in France, the preparation of the application determines what is actually obtained.