Progress Maschinen & Automation v AWM (CoA, 23 July 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 23 July 2024 (UPC_CoA_177/2024, APL_20002/2024), the Court of Appeal (K. Grabinski, presiding, P. Blok, rapporteur, E. Germano) set aside in its entirety the Milan Local Division’s order of 8 April 2024, which had refused Progress Maschinen & Automation access to the expert reports resulting from inspection and preservation measures and then revoked those measures for failure to start proceedings on the merits in time. The Court laid down two structural rules: an application for measures implies a request that their outcome be disclosed to the applicant, and the period under Art. 60(8) UPCA runs only from that disclosure or from a final decision refusing it.

Facts and procedure

On 23 August 2023, Progress applied for preservation of evidence and inspection against AWM and SCHNELL, which the Milan Local Division granted on 25 September 2023 subject to confidentiality conditions. The measures were executed on 17 October 2023 and the experts lodged their reports under seal. Progress requested access to the reports on 16 February 2024 and made further requests on 4 March 2024. By order of 8 April 2024 (UPC_CFI_286/2023 and UPC_CFI_287/2023), the Local Division declared the disclosure application inadmissible, revoked the measures, ordered the return of the evidence gathered and ordered Progress to pay EUR 10,000 in legal costs, while granting leave to appeal. The Court of Appeal granted suspensive effect on 2 May 2024.

The applicable law

Art. 60 UPCA and Rules 192 et seq. RoP govern preservation of evidence and inspection. Art. 60(8) UPCA and Rule 198.1 RoP provide for revocation of the measures if the applicant does not start proceedings on the merits in time, and Rule 197.3 RoP allows the defendant to request a review. The Court also refers to Art. 7 of Directive 2004/48/EC and Art. 50(6) of the TRIPS Agreement.

Question

Does an application for preservation of evidence include a request that the expert report be disclosed to the applicant, and when does the period for starting proceedings on the merits begin?

Decision

An application for measures under Art. 60 UPCA implies a request that their outcome, including the expert report, be disclosed to the applicant. The Local Division should therefore have ruled without a further request (paragraphs 10 and 14). Disclosure is not unconditional: the other party must be heard, given access to the evidence and allowed to request confidentiality, after which the applicant may respond subject to non-disclosure obligations (paragraphs 11 and 15). Failure to request a review under Rule 197.3 RoP is not tacit approval of disclosure (paragraph 12). The Art. 60(8) UPCA period runs from disclosure to the applicant or from a final decision refusing access, and the court should state this in its order (paragraph 17). As there has been neither access nor a final refusal, the period has not started and there are no grounds for revocation (paragraphs 19 and 20), the findings of inadmissibility, the return of evidence and the costs fall with it (paragraph 21). The case is referred back to the first-instance panel, which must give the defendants access and the opportunity to request confidentiality (paragraphs 23 and 24). The request for return of the EUR 50,000 security is inadmissible under Rule 222.2 RoP (paragraph 26) and no costs order is made (paragraph 27).

Key points for practice

• An application for preservation of evidence implicitly includes a request that the expert report be disclosed to the applicant (paragraph 10).
• Disclosure requires the other party to be heard and allowed to seek confidentiality, even if it did not request a review (paragraphs 11 and 12).
• The Art. 60(8) UPCA period runs only from disclosure to the applicant or from a final refusal (paragraph 17).
• Practical point: an applicant need not start proceedings on the merits until it has had access to the report, but should make sure the order specifies when the period begins.

Provisions applied

Agreement on a Unified Patent Court

Art. 60(1) and (8)

Rules of Procedure

Rules 192, 196, 197, 198.1, 199 and 222.2

Directive 2004/48/EC

Art. 7(1) and (3)

Other provisions

TRIPS Agreement, Art. 50(6)

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.