Prinoth v Xelom (CFI, 27 October 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By a panel order of 27 October 2025 (UPC_CFI_127/2025, proceedings in Italian), the Milan Local Division dismissed Xelom’s request to revoke the ex parte order of 18 March 2025, which had granted Prinoth a description of evidence and the seizure of a Snow Cat electric snow groomer (EP 1 995 159 and EP 2 507 436). Only a clerical error in the operative part was corrected, excluding commercial documents. The order applies the Court of Appeal’s approach to the review of evidence preservation: no assessment of validity, an urgency test specific to evidence, and a risk of loss judged by probability.

Facts and procedure

Prinoth filed its application on 24 February 2025 and supplemented it on 10 March 2025. The order of 18 March 2025, made without hearing Xelom, granted description and the seizure of one vehicle against security of EUR 75,000, it was executed on 2 April 2025. Xelom requested a review on 30 April 2025 under Rules 197.3 and 198.2 RoP, seeking full revocation and, in the alternative, release of the vehicle and the exclusion of commercial documents (paragraph 16). A confidentiality order of 13 June 2025 was not appealed (paragraph 49).

The applicable law

Art. 60 UPCA and Rules 192 to 199 RoP govern orders to preserve evidence. Rule 197.3 RoP gives the defendant a review of a measure ordered without hearing it. The division relied on the Court of Appeal’s order of 15 July 2025 (UPC_CoA_327/2025), under which the court is not required to assess the validity of the patent at this stage (paragraphs 17 and 26).

Question

Should an order made without hearing the defendant be revoked for breach of the duty of candour, doubts on validity, lack of urgency or a disproportionate seizure?

Decision

No. Not disclosing the prosecution history of a US patent does not breach the duty of candour: it is a separate title with no bearing on the decision (paragraphs 23 and 24). Validity is examined only on the merits or in provisional measures, unless the presumption is clearly undermined. There is no opposition or revocation action (paragraphs 26 to 28). Urgency for evidence differs from urgency for provisional measures. The product’s rapid commercial roll-out and the Interalpin fair in Innsbruck in May 2025 justified it (paragraphs 31 and 32). Since digital data and axle-load distribution are easily altered, a possibility of alteration is enough to justify proceeding ex parte (paragraphs 36 and 37). Seizing a single vehicle, kept at Xelom’s premises and covered by the security, is proportionate, with weighing deferred to the merits (paragraphs 41 and 42). The operative part had mistakenly included commercial documents that the reasons excluded: the clerical error is corrected, with no effect on execution (paragraphs 45 and 46). Prinoth’s request to extend the order to software was rejected as it had not appealed (paragraphs 47 and 54). The EUR 75,000 security stands: loss is measured by margin, not sale price, and costs of the merits fall to security sought in the main action (paragraph 53). Costs of the review follow the main action.

Key points for practice

• When preserving evidence, validity is not debated unless the presumption is clearly undermined by an opposition or revocation action.
• An ex parte applicant’s duty of candour does not extend to the prosecution history of a separate foreign patent.
• Security set for evidence preservation covers the evidence stage and loss measured by margin, not future costs of the merits.
• Practical point: a defendant challenging a seizure should target the specific items of the operative part, since a mismatch with the reasons may be corrected as a clerical error.

Provisions applied

Agreement on a Unified Patent Court

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

Rules of Procedure

Rules 9.1, 192 to 199, 209.2, 211, 220.1(c) and 224.2(b)

Directive 2004/48/EC

Art. 7(1) and (3)

Regulation (EU) No 1215/2012

Art. 4 and 7(2)

Case law cited

Court of Appeal, 15 July 2025 (UPC_CoA_327/2025), Progress Maschinen v AWM, 23 July 2024 (Court of Appeal, UPC_CoA_177/2024), Primetals v Danieli, 11 September 2024 (Milan Local Division, UPC_CFI_337/2024), C-Kore Systems v Novawell, 1 March 2024 (Paris Local Division, UPC_CFI_397/2023)

Related decisions

• PRINOTH v XELOM, 18 March 2025, ex parte order to preserve evidence under review.

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.