Evidence preservation before the UPC

The Unified Patent Court has its own instrument for preserving evidence, provided for by Article 60 of the Agreement of 19 February 2013 and implemented by Rule 194 of the Rules of Procedure. It serves the same function as the French saisie-contrefaçon, but it has neither its mechanics nor its effects.

The framework

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 fixes its content: the patent relied on, the facts alleged, the evidence already available, the measures sought and the reasons why they are necessary. As in French practice, the rigour of that drafting governs everything that follows.

Three differences from the French seizure

The ex parte character is the exception

This is the most important divergence. The French saisie-contrefaçon is always ordered on an ex parte application. Before the Unified Patent Court, hearing the defendant first is the rule. An order made without hearing the defendant is reserved for cases where delay would risk causing irreparable harm to the proprietor, or where there is a demonstrable risk that evidence will be destroyed. An applicant counting on surprise must therefore justify it, and is never certain to obtain it.

Who attends the operations

The composition of the team executing the measure does not follow the French rules, under which the applicant’s usual patent attorney may assist the commissaire de justice. That apparently technical point determines, in practice, the quality of what is described and taken away: reading the patent during the operations is not a luxury, it is what separates a useful description from an 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.

La pratique s’est fixée affaire par affaire. Nous avons suivi les premières ordonnances de saisie rendues par la Juridiction unifiée, l’affaire Oerlikon en Italie, l’affaire C-Kore devant la division locale de Paris, puis le premier appel formé contre une ordonnance de saisie. Sur la production forcée de preuves, l’ordonnance rendue dans Huawei contre Netgear appelle une lecture séparée.

When to prefer it

A measure before the Unified Patent Court is the right choice where the action on the merits will be brought there: the evidence is gathered within the procedural framework that will judge it, and its admissibility is not open to argument. It is equally appropriate where 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.

Key takeaways

Further reading