PRINOTH v XELOM (CFI, 18 March 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 18 March 2025 (UPC_CFI_127/2025, ORD_11002/2025), the Milan Local Division (P. Perrotti, presiding, A. Zana, rapporteur, and M. Knijff) granted, without hearing Xelom, Prinoth’s application for preservation of evidence, inspection and seizure concerning the « Snow Cat » electric tracked vehicle, alleged to infringe EP 1 995 159 and EP 2 507 436. The measures were granted on conditions and markedly trimmed: accounting records, software, weighing of the vehicle and the parent company’s premises were excluded. The order shows the Milan Division’s approach: an evidential standard tailored to a procedural measure, a detailed balancing exercise and confidentiality safeguards in line with the Court of Appeal.

Facts and procedure

Prinoth, proprietor of both patents, applied on 24 February 2025 under Art. 60 UPCA, seeking an order without hearing the defendant. The presiding judge found no extreme urgency and a judge-rapporteur was appointed. By procedural order of 4 March 2025 the applicant was asked to specify documents, keywords and experts, which it did in a supplementary submission of 10 March 2025 (Rule 9.1). The vehicle had reportedly been marketed since late 2024 and was due to be shown at the Interalpin fair in Innsbruck in early May 2025.

The applicable law

Jurisdiction rests on Arts. 32(1)(c) and 33(1)(b) UPCA, the opt-out having been withdrawn, and on Arts. 4 and 7(2) of Regulation 1215/2012 (paragraph 1). The measures fall under Art. 60 UPCA and Rules 192 to 199, an ex parte order requires the conditions of Rules 194.2 and 197 to be met, in particular a demonstrable risk of evidence being destroyed (Art. 60(5) UPCA).

Question

Had the proprietor produced the reasonably available evidence of infringement, and did urgency and the risk of evidence disappearing justify inspection and seizure without hearing the defendant, and within what limits?

Decision

The Division relied on the presumption of validity, there being no opposition, revocation action or protective letter (paragraph 3.1). It applied a standard of reasonable evidence supporting a well-founded suspicion, tailored to a measure that concerns a procedural rather than a substantive right, and followed the applicant’s party expert: probable infringement of claims 1 and 9 of EP 2 507 436 and several dependent claims, and suspicion as to claim 1 of EP 1 995 159 (paragraph 3.2).

Urgency followed from the recent market launch, the Innsbruck fair, the cost of a test purchase (EUR 500,000 to 600,000 according to the applicant) and the parties’ direct competition. The volatility of digital data showed a real and concrete possibility of evidence disappearing (paragraphs 4.1 and 4.2).

Balancing the interests (paragraph 6.1), the Division excluded accounting records, relevant only to a later damages claim, crane weighing, as too invasive, software not directly covered by the patents and the parent company, which was not a party (paragraph 6.2). Execution was entrusted to an expert assisted by two forensic IT specialists, under Italian law as the law of the place of execution (Rule 196.4). If Xelom requests confidentiality by 7 May 2025, access to the report will be settled by separate order after hearing the parties, following the Court of Appeal (paragraph 6.4). The order is enforceable only once security of EUR 75,000 is provided (paragraph 6.7), proceedings on the merits must follow within 31 calendar days or 20 working days, whichever is longer, and costs are reserved.

Key points for practice

• The evidential standard depends on the measure: for preservation of evidence, reasonable evidence of a well-founded suspicion suffices, and a party expert’s opinion may supply it.
• The Division cut the application back to what served proof of infringement, excluding in particular accounts and software.
• The high cost of a test purchase and the product’s imminent display at a trade fair support urgency.
• Practical point: an ex parte application should target the technical items and search keywords precisely, since the Division strikes out ancillary or invasive requests.

Provisions applied

Agreement on a Unified Patent Court

Arts. 32(1)(c), 33(1)(b), 60, 73(2)(a) and 83(3)

Rules of Procedure

Rules 5, 9.1, 192, 194, 196, 197, 198, 199, 220.1(c) and 224.2(b)

Directive 2004/48/EC

Art. 7

Regulation (EU) No 1215/2012

Arts. 4 and 7(2)

Case law cited

Primetals Technologies Austria v Danieli, Milan Local Division, 11 September 2024, C-Kore Systems v Novawell, Paris Local Division, 1 March 2024, Progress Maschinen & Automation v AWM, Court of Appeal, 23 July 2024

Related decisions

• Prinoth v Xelom, 27 October 2025, later order in the same proceedings.

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.