A guide to the UPC and the UP - Flipbook - Page 355
are so popular in, for example, France, the Netherlands, Italy and Belgium. It also needs to be
understood however these are civil law jurisdictions in which discovery or disclosure of
documents is not a feature of their litigation system.
18-05 A major difference between the procedure provided for in the UPCA and RoP and the currently
known national saisie procedures is that, unlike the national saisie procedures. it is not granted
automatically on an ex parte basis. Under the UPCA and RoP, applicants who wish to benefit
from the effect of surprise with an ex parte seizure must specify their reasons for the
application being made ex parte, for example, that any delay is likely to cause them irreparable
harm or there is a demonstrable risk of evidence being destroyed or otherwise ceasing to
be available. 5 They must also disclose any material facts which might influence the Court
in deciding whether to make an order. 6 As a consequence, the Court will not grant an
ex parte order for a saisie or an inspection solely on the basis that the patentee wishes
to be sure that there is sufficient evidence of infringement available to them before starting
an action on the merits. 7
18-06 An order to produce evidence would seem to be similar to a request for specific disclosure
(or discovery) of documents, familiar to common law practitioners and the application is made
during the course of the written or interim proceedings.
18-07 Finally, orders for communication of information can be requested in order to ascertain the
infringing products’ distribution channels, quantities of infringing products sold and the names
of other parties involved in the production or distribution of the infringing products. Such
orders will typically be made once there has been a finding of infringement (as suggested by
use in Article 67 of the term “an infringer”) but as it seems that orders under the corresponding
provision in Article 8 of the Enforcement Directive can be made at any stage of an action this
may be too narrow a reading. 8
18-08 The RoP also include two other provisions which relate to obtaining evidence: 9
– Experiments ordered by the Court; 10 and
– Lettersof request. 11 After hearing the parties, the Court may, of its own motion or on a
party’s reasoned request, issue letters of request for the production of documents, or the
hearing of witnesses or experts located outside the Court’s jurisdiction.
Examples of How the Evidential Tools Might be Used
18-09 The tools offered by the UPCA and the RoP can be used in a number of different scenarios.
Examples include:
(a) A patentee has enough evidence to prove the infringement of its patent, but wishes to know
the full extent of the infringement to estimate the amount of damages before making a
decision to commence proceedings;
5
6
7
8
9
10
11
art.60(5) UPCA and r.197(1) RoP.
r.192(3) RoP.
r.13 RoP.
See the Opinion of Advocate General Rantos in TB, other parties to the proceedings: Castorama Polska Sp. Z o.o., ‘Knor’ Sp. Z o.o
(C-628/21), ECLI:EU:C:2022:905.
Although, in the RoP, freezing orders as provided for by art.61 UPCA and r.200 RoP are included in the section dealing with
evidence, the purpose of such orders is to ensure that assets are not removed from a particular jurisdiction to avoid
enforcement of a judgment of the Court against those assets. They are therefore considered as part of chapter 16
(Provisional and Protective Measures) at paragraphs 16-17, 16-18 and 16-38.
r.201 RoP. See chapter 17 (Evidence) paragraphs 17-96 to 17-114.
r.173 RoP. See chapter 17 (Evidence) paragraphs 17-15 to 17-23.
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A Guide to the UPC and the UP 345
