Orders to preserve evidence under the Unified Patent Court: seven trends from the emerging case law

Evidence preservation measures in the form of a "saisie-contrefaçon" have long been part of the patent litigation landscape in civil law jurisdictions like Belgium, France and Italy. These national procedures enable patentees to collect evidence of a suspected patent infringement on an ex parte basis (that is, without the targeted party being heard), prior to starting or during an infringement action, often within a short timeframe and at minimum cost. The many advantages of the saisie-contrefaçon, including the surprise effect it guarantees, make it a favoured procedural tool of patentees in these jurisdictions.

The "order to preserve evidence and to inspect premises" available under article 60 of the Agreement on a Unified Patent Court (UPCA) and articles 192 to 199 of the Rules of Procedure of the Unified Patent Court (RoP) are largely inspired by the saisie-contrefaçon. So far, five such orders have been handed down since the launch of the Unified Patent Court (UPC) in June 2023. What light can be shed on the trends, and first lessons that can be learned, from this emerging case law?

UPCA evidence preservation orders in a nutshell

Article 60 of the UPCA provide for either inter partes or ex parte proceedings to obtain provisional measures to preserve evidence of an alleged infringement. Such evidence must then be used in the proceedings on the merits.

The applicant, be it the patentee itself or an authorised licensee, must provide reasonably available evidence of the (threat of) patent infringement and may request such measures before or during proceedings on the merits.

Evidence preservation measures are quite far reaching and may include the detailed description or physical seizure of the allegedly infringing products, the taking of samples, the physical seizure of materials used in the production or distribution of these goods, and any documents relating thereto. The disclosure of digital media and data may also be ordered and premisses may be inspected.

These measures may be ordered ex parte, if any delay is likely to cause irreparable harm to the patentee, or if there is a demonstrable risk of evidence being destroyed. The ex parte character of the procedure must therefore be explicitly requested and justified in the application by setting out the reasons for not hearing the defendant.

If granted, the order to preserve evidence will specify the person who will carry out the measures and then file a written report with their findings, in accordance with the national law of the place where the measures are enforced.

The report may only be used in the proceedings on the merits which, if not already pending, must be started within 31 calendar days or 20 working days from the filing of the report (whichever is longest). Failure to do so will result in the measures being revoked and ceasing to have effect, if requested by the defendant.

In an order of 8 April 2024, the UPC Local Division in Milan dismissed an application to access expert report and revoked the provisional measures granted on 25 September 2023 to inspect premises and to preserve evidence due to the applicant's failure to comply with this statutory time limit.

Emerging case law trends

So far, five orders have been issued by the Belgian, Paris and Milan Local Divisions, all countries with a long-standing tradition of national saisie-contrefaçon procedures. From these, certain trends are discernible in several areas.

Assessments of the patents invoked and of the reasonably available evidence of infringement

All in all, the assessment of the main requirements of having a valid patent and reasonable evidence of the alleged infringement have been quite clear cut.

When assessing the validity of the patent, the court did verify whether an opposition or a proceeding challenging the validity was pending (June 2023 Milan order and Paris orders) or confirmed an opposition had been rejected (September 2023 Milan order).

Balance of interests and proportionality

The interests of the patentee were systematically favoured, taking into consideration the principle of proportionality, with several orders considering that the mere fact that evidence could easily be erased or destroyed was sufficient to have the interests of the applicant prevail (Paris and September 2023 Milan orders).

Ex parte is the way to go

A notable trend is that all the orders were granted ex parte, based on a rather high-level assessment of the risk that the evidence could no longer be accessible, either because the evidence would not be available (any more) at the targeted trade fair (Brussels and June 2023 Milan orders), or because the evidence could be easily removed, hidden or erased due to its digital nature (September 2023 Milan order and Paris orders).

The Brussels division highlighted the irreparable harm that the applicant would suffer if the infringing products were to be removed and not made available at the trade fair. The Paris division emphasised the ease of removal of the evidence if the defendant was heard and informed in advance, which it confirmed in its order of 1 March 2024.

All local divisions adopted a rather straightforward approach in their assessment of the urgency criteria to justify the grant of an order ex parte:

• The Milan order of June 2023 considered that the parties could not be heard because the trade fair where the targeted evidence was available was ending the day after the application.
• Despite the fact that the trade fair and potential infringement had been known to the applicant for three months, the Brussels division justified the urgency by referring to the limited time available because the targeted trade fair was ending two days after the lodging of the application.
• The Milan order of September 2023 simply referred to the fact that two products had already been sold and one offered for sale, as well as the future participation of the alleged infringer in a trade fair.
• In its November 14 order, the Paris division considered that taking less than three months to file an application for preserving evidence was a reasonable delay, since the applicant asked for a standard procedure and not an urgent one. It then confirmed, in its 1 March 2024 decision, that the urgency requirement was irrelevant because the court based its decision on the "demonstrable risk of evidence being destroyed or otherwise ceasing to be available".

Confidentiality measures

The UPC can order specific measures to ensure effective protection of the confidential information of the targeted party.

All the orders only allowed representatives of the applicants (that is, attorneys and experts bound by confidentiality restrictions) to attend the enforcement and access the information collected by the expert.

A confidentiality club was set up by the Paris division to identify the trade secrets within the relevant information that should only be accessed "by specific persons". The September 2023 Milan order adopted a stricter approach and submitted the access to the report and its enclosed documents to the authorisation of the court, within a confidentiality club.

The expert's report

All orders highlighted that the written report and its exhibits may only be used in the proceedings on the merits of the case, in accordance with the RoP.

The Brussels division ordered the expert to file their report within one week of the enforcement of the order, due to the deadline imposed on the applicant to commence proceedings on the merits.

Security

The UPC may subject the measures to preserve evidence to the lodging of adequate security to ensure compensation for any prejudice suffered by the targeted party.

In the case of ex parte orders, the RoP provide that a security will be imposed "unless there are special circumstances not to do so".

In practice, this assessment has been rather lax, with the June 2023 Milan order considering that no security was necessary because only descriptive measures were requested, which would not restrict or damage the activities of the defendant. The Brussels division did not even address the issue.

On the other hand, the September 2023 Milan order imposed the provision of €50,000 as security, representing 2.5% of the estimated value of the case. A €20,000 security was imposed by the Paris division.

Protective letters

According to the UPCA, any person at risk of being targeted by a request for evidence preservation may file a protective letter with the UPC Registry, which will set out the facts, written evidence, and arguments of law challenging the grant of such measures. Protective letters have effect on the entire UPC territory and are valid for a period of six months.

Despite their relevance, no protective letters were filed in the cases discussed.

Osborne Clarke comment

While German local divisions are dominating the UPC litigation landscape, none of the five orders for preserving evidence were granted by a German division. Applicants have all opted for countries with a long-standing tradition of national saisie-contrefaçon procedures, and it seems that this strategy has paid off, with all requests being granted on an ex parte basis.

As to the ex parte nature of the orders, the wording of the UPCA suggested that a strict assessment would be made – but the emerging case law reveals a generally uncomplicated and flexible approach.

All orders were granted ex parte, based on a high-level assessment of a possible risk that the evidence might cease to be available. The threshold of this assessment has been lower than expected and seems at odds with the wording of the UPCA. This is a welcome approach because it guarantees the much-needed surprise effect that made the national saisie-contrefaçon counterparts so effective.

Despite being rather pro-patentee, the local divisions have nevertheless balanced the interests of the parties at stake. Confidentiality clubs were set up when the orders were not enforced at trade fairs (local divisions assumed that the targeted evidence was public if collected at trade fairs). Trade fairs were targeted in half of the orders granted and extra caution may have to be taken by possible infringers attending such events in a UPC-participating member state.

Since the launch of the UPC in June 2023, the ability to request orders to preserve evidence of suspected infringement have attracted limited interest from patent holders. The flexible approach adopted by the respective local divisions, with ex parte measures so far routinely granted to ensure the element of surprise, confirms that these orders are a highly relevant procedural tool available to patentees to collect evidence of alleged infringement before the UPC.