A Summary: The UPC Order to preserve evidence and Order for inspection (Saisie)

Written by Louise AMAR 21 September 2016

The issue of Evidence is discussed in Part 2 of the Rules of procedure and Chapter III and IV of the Unified Patent Court Agreement. Rule 170 details the means of evidence and the means of obtaining evidence.

It lists 4 means of evidence in proceedings before the Court, which are:

  • written evidence, whether printed, hand-written or drawn, in particular documents, written witness statements, plans, drawings, photographs;
  • expert reports and reports on experiments carried out for the purpose of the proceedings;
  • physical objects, in particular devices, products, embodiments, exhibits, models;
  • electronic files and audio/video recordings.

Which can be obtained by:

  • hearing of the parties;
  • requests for information;
  • production of documents;
  • summoning, hearing and questioning of witnesses;
  • appointing, receiving opinions from, summoning and hearing and questioning of experts;
  • ordering inspection of a place or a physical object;
  • conducting comparative tests and experiments;
  • sworn statements in writing (written witness statements);
  • ordering a party or a third party to produce evidence;
  • ordering measures to preserve evidence.

This summary will focus specifically on the order to preserve evidence and order for inspection which are governed by the Rules of Procedure 192 to 199 and Chapter III and IV of the Unified Patent Court Agreement.

  1. Content of the Application:

For all Applications:

The Application must contain: the name of the parties, their address, the details of the patent, information about any prior or pending proceedings relating to the patent, an indication of the division which shall hear the action with an explanation of why that division has competence, the detailed description of the measures requested, the reasons for such request, the facts and evidence relied on in support of the application.

When there is no pending action, the Application must also include a concise description of the proceedings to be started and an indication of the facts and evidence which may be relied on.

For Ex-parte Applications only:

The Application must state the reasons for not hearing the defendant, in particular any delay likely to cause irreparable harm, and any demonstrable risk of evidences being destroyed or otherwise ceasing to be available.

The applicant has the duty to disclose any material fact which might influence the court.

2. Preserving the defendant’s interests:

For all Applications:

Confidentiality:

The disclosure may be limited to certain named persons / or subject to non-disclosure terms.

Security and Compensation:

When granting the order, the Court may order the applicant to provide adequate security for the legal costs and other expenses and compensation for any injury incurred or likely to be incurred by the defendant which the applicant may be liable to bear.

Where the measures to preserve evidence are revoked, or where the applicant has failed to start proceedings within the time allowed, or where it is subsequently found that there has been no infringement of the patent, the court may order the applicant, upon request of the defendant, to provide compensation for any injury caused by the measures.

Limited use of evidence:

The evidence obtained may only be used in the proceedings on the merits of the case.

For Ex-parte Applications only:

Security: The Court shall order the applicant to provide adequate security to cover legal costs, expenses and compensation for any injury incurred or likely to be incurred by the defendant which the applicant may be liable to bear.

3. Performing the order to preserve evidence:

For all Applications:

The measures shall be performed in accordance with national laws where the measures are performed.

The person performing the measures and presenting a written report shall be a professional or expert with guarantees or expertise, independence and impartiality according to national laws.

The applicant is not allowed to assist to the measures, but may be represented.

For Ex-parte Applications only:

The defendant shall immediately be given notice of the order at the time of the execution of the measures.

The parties affected shall be given notice without delay and at the latest immediately after the execution of the measures.

4. Revocation of the order:

For all Applications:

The defendant may request a review of the order within 30 days from the execution of the measures. The court may confirm, modify or revoke this order.

The applicant must start proceedings on the merits of the case within 20 working days or 31 calendar days, whichever is the longest, from the date specified in the Court’s order. If the applicant fails to do so and upon request of the defendant, the Court shall ensure that the order is revoked or ceases to have effect.

Upon request, a compensation may be provided to the defendant if the measures are revoked or the proceedings on the merits of the case have not been started.


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Evidence

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