Order to preserve evidence (UPC)

An order to preserve evidence enables the Unified Patent Court to secure evidence of alleged patent infringement before a final decision on the merits. Article 60 UPCA and Rules 192 onwards provide the framework. The measure is comparable in purpose to the French saisie-contrefaçon, but its procedural requirements must be assessed independently. An order to inspect premises may also be sought.

Conditions for obtaining an order

The applicant must present reasonably available evidence supporting the claim that the patent has been infringed or is about to be infringed. The application should identify the evidence sought, where it is likely to be found and the specific measures needed to preserve it.

Available measures include a detailed description, with or without samples, and physical seizure of relevant products and, where appropriate, production or distribution materials, implements and associated documents. The scope of the proposed measures and safeguards for confidential information require careful justification.

Applications without notice

An order may be made without the other party being heard where the conditions are met, particularly if delay is likely to cause irreparable harm or there is a demonstrable risk that evidence will be destroyed. An application without notice is not automatic merely because preservation is sought. The Court can require security to cover potential prejudice to the defendant.

Execution and confidentiality

Execution follows the order and the applicable procedural rules. For an inspection of premises, Article 60(4) excludes the applicant’s own attendance but permits representation by an independent professional practitioner named in the order. The identity, role and independence of those attending must therefore be addressed in advance.

Preservation does not imply unrestricted disclosure to the applicant. Confidential documents and trade secrets require appropriate safeguards. Where measures were ordered without a hearing, the affected party must be notified promptly and can request review, including a right to be heard.

Proceedings on the merits and potential compensation

The applicant must comply with the deadline for bringing an action leading to a decision on the merits. Article 60(8) provides for revocation or cessation of the measures at the defendant’s request if no such action is brought within the prescribed period, which cannot exceed 31 calendar days or 20 working days, whichever is longer. The order and the applicable rules must be checked when calculating the deadline.

Article 60(9) provides for appropriate compensation at the defendant’s request in the circumstances it specifies, including where measures are revoked, lapse through an act or omission by the applicant, or infringement or its threat is subsequently found not to exist.

Practical significance

The application must be designed around the evidence actually needed for the claim. Narrowly defined operations, an executable protocol and workable confidentiality arrangements improve the usefulness of the evidence and reduce the scope for procedural disputes. Dhenne Avocats acts for applicants and parties affected by evidentiary measures.

Related resources

UPC Litigation Watch · Unified Patent Court

Dhenne Avocats represents clients in patent disputes before the French courts and the UPC. Discuss a dispute with the firm.

This glossary entry provides general information and is not advice on an individual matter.