A guide to the UPC and the UP - Flipbook - Page 305
Overview
16-01 Under art. 62 UPCA, a number of provisional and protective measures are available to
claimants, in particular to patentees bringing proceedings for actual or threatened
infringement. The available measures are as follows:
– Injunctions to prevent imminent infringement or prohibit infringement that has already
begun (provisional injunctions);
– Orders for seizure of goods to prevent their entry into or movement within channels of
trade (seizure of goods); and
– Orders for seizure of property where recovery of damages may be endangered
(seizure of assets).
16-02 In addition, an interim award of costs is listed in r.211 RoP as a provisional measure.
16-03 Orders for the seizure of assets and freezing orders 1 have many similarities; thus freezing
orders are also considered in this chapter. However, it is important to bear in mind that the
former (as with all other provisional and protective measures) can be directed towards the
alleged infringer and intermediaries, whereas the latter can only be directed towards the
alleged infringer. Also, the former cannot be extended to have extra-jurisdictional effect,
whereas the latter can.
16-04 The procedural rules relating to provisional and protective measures 2 on the one hand and
preserving evidence (saisies) and orders for inspection 3 on the other are written as two
different and distinct sets of rules, although there are considerable similarities in the wording
used in each case. The aim of the provisional and protective measures is to stop infringing
activity, or to stop assets from disappearing until such time as the issue of permanent relief
can be considered by the Court. Saisies and orders for inspection differ from provisional and
protective measures in that they relate to preserving and/or obtaining evidence relating to an
alleged infringement and once the evidence has been secured, the Court’s order governs the
access that the applicant can have to that evidence. In this way, they are not nearly as
draconian as provisional and protective measures. 4 Orders for saisies and orders for
inspection, together with other evidence gathering procedures, are the subject of chapter 18.
16-05 In this chapter, the subject matter of the provisional and protective measures will be reviewed
before the substantive and procedural requirements for obtaining them. Also covered in this
chapter are protective letters. These may be filed by a potential defendant to protect against
the granting of a provisional injunction, seizure of goods or seizure of assets without an
opportunity to be heard. Protective letters will be very familiar to some practitioners in Europe,
whereas to others they will be new. In Germany, for example, protective letters have long been
used as a means to prevent ex parte injunctions from being granted.
1
2
3
4
art.61 UPCA.
art.62 UPCA and rr.205 to 213 RoP.
art.60 UPCA and rr.192 to 199 RoP.
The same split is embodied in arts 7 (measures for preserving evidence) and 9 (provisional and precautionary measures)
Enforcement Directive, but not in art.50 TRIPS Agreement.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 295
