AWM v Progress Maschinen & Automatio (CFI, 8 April 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By an order of 8 April 2024 (UPC_CFI_286/2023 and UPC_CFI_287/2023, ACT_565446/2023 and ACT_565453/2023), the Milan Local Division (Perrotti, presiding and judge-rapporteur, Lignières, Zana) held inadmissible the application for access to the expert report brought by Progress Maschinen & Automation AG (PMA), proprietor of EP 2 726 230, because it had not started proceedings on the merits within the Rule 198.1 RoP time limit. It revoked the preservation of evidence and inspection measures obtained without a hearing against AWM S.R.L. and Schnell S.p.A., ordered the return of the material seized and ordered PMA to pay EUR 10,000 in costs. The division notes that it is the first UPC decision on the point (paragraph 9). The order shows that, without a merits action in time, the applicant loses any access to the results of the saisie.

Facts and procedure

On 23 August 2023 PMA applied without notice for preservation of evidence and inspection measures directed at the Girderflex apparatus offered by AWM. The orders, made on 25 September 2023 (nos 576298/2023 and 576304/2023), were executed and the expert reports filed. No review was sought, no appeal lodged and no merits action brought. On 16 February 2024 PMA applied for access to the report, arguing that it needed it to decide whether to sue, and asked in the alternative for an extension of time or leave to sue before expiry of the six-month period under Rule 320.2 RoP. The defendants argued that the measures had lapsed under Art. 60(8) UPCA and Rule 198.1 RoP and claimed compensation.

The applicable law

Under Art. 60(8) UPCA and Rule 198.1 RoP, measures to preserve evidence are revoked or cease to have effect, at the defendant’s request, if the applicant does not start proceedings on the merits within the time limit. The expert report may be used only in the merits proceedings against the same parties (Rules 196.2 and 199 RoP). Art. 60(9) UPCA and Rule 198.2 RoP give the defendant a right to compensation, and Art. 69 UPCA governs costs.

Question

Can an applicant who has not started merits proceedings within the Rule 198.1 RoP time limit still obtain access to the expert report, and what follows for the measures, the evidence gathered, damages and costs?

Decision

The access application is inadmissible (paragraph 4). The 30-day review period (Rule 197.3 RoP) expired without a request, PMA gave no justification for its delay in seeking access, and the Rule 198.1 RoP time limit is mandatory and cannot be extended under Rule 9.4 RoP. Since the report may only be used in merits proceedings against the same parties, access no longer serves any purpose.

The measures are revoked and cease to have effect, without prejudice to compensation (paragraph 5). To restore the status quo ante, the material gathered (memory sticks, brochures, inspection material) is returned to the defendants (paragraph 6), from 5 June 2024 unless the Court of Appeal decides otherwise, so as to allow an appeal with a request for suspensive effect (paragraph 7). The defendants’ damages claim fails for want of proof of concrete loss (paragraph 8). Finally, exceptional circumstances, namely the novelty of the issue, justify ordering PMA to pay EUR 10,000 in costs on an equitable basis (paragraph 9). An appeal lies within 15 days (paragraph 10).

Key points for practice

• The Rule 198.1 RoP time limit for starting merits proceedings after a saisie is mandatory and cannot be extended under Rule 9.4 RoP.
• Without a merits action in time, the applicant loses access to the expert report, the measures are revoked and the evidence is returned.
• A defendant claiming compensation after revocation must prove concrete loss.
• Practical point: an applicant should seek access to the report promptly and prepare the merits action in parallel, since expiry of the time limit deprives it of the benefit of the saisie.

Provisions applied

Agreement on a Unified Patent Court

Art. 54, Art. 60(8) and (9), Art. 69, Art. 73(2)(a) and Art. 74

Rules of Procedure

Rules 9.4, 196.2, 197.3, 198.1, 198.2, 199, 220.1(c), 223, 224.2(b) and 320.2

Directive 2004/48/EC

Art. 7

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.