A guide to the UPC and the UP - Flipbook - Page 356
(b) A patentee needs access to their competitor’s drug master file to prove infringement of a
pharmaceutical patent;
(c) Variations in temperature, pressure and molecular weight need to be measured during
a manufacturing process to prove infringement of a claim to a process;
(d) Test results submitted to environmental or health authorities contain proof of the use of
a particular chemical;
(e) Where exact workings of an electronic device cannot be determined by reverse engineering,
access to the manufacturer’s documentation is required;
(f) After obtaining injunctive relief, a patentee wishes to learn more about the volume and
destination of the infringing products in order to determine if it is worth pursuing
damages proceedings.
18-10 In scenarios (b) and (d), there is less risk that the evidence will disappear or be tampered
with, so an inter partes request for production of evidence may be the more appropriate route.
In scenarios (a) and (e), a request for a saisie prior to the launch of proceedings is likely to be
the best option for the patentee. For scenario (c), a request for an inspection, or a description
by an independent expert or patent attorney, may be appropriate. Depending on whether there
is cogent evidence of a risk that the evidence of infringement being sought could be destroyed
or altered when prior notice is given, they may be ordered either on an inter partes or an ex
parte basis. In scenario (f) the Court has already determined infringement and the order to
produce evidence will be focussed on inspection of accounting documents and other evidence
that establishes the origin, destination and volume of infringement.
Orders To Preserve Evidence (Saisies)
Substantive Requirements
Introduction
18-11 The main substantive requirements for a saisie are contained in art.60(1) UPCA and r.192 RoP. 12
Art.60(1) UPCA states that the aim of a saisie is to preserve evidence in respect of the alleged
infringement; the applicant must therefore provide reasonably available evidence to support
the claim that the patent has been infringed or is about to be infringed. The making of the order
by the Court is subject to the requirement that confidential information is protected. 13
18-12 The application can be made before or once proceedings on the merits have been commenced.
Note that although the Court’s order has to be “prompt and effective” 14 there is no requirement
of urgency placed on the applicant. Indeed, the Expert Group of the Preparatory Committee
considered urgency to be just one factor that the Court must consider but did not regard it to
be a prerequisite. This is in contrast to an application for provisional measures, where the Court
must have regard to any unreasonable delay. 15
Need to Preserve the Evidence
18-13 The main substantive issue that the Court will consider is “why the proposed measures are
needed to preserve relevant evidence”. 16 The Court will have to consider the risk that should an
12
13
14
15
16
art.60 UPCA derives from art.7(1) Enforcement Directive.
See paragraph 18-19.
art.60(1) UPCA.
r.211(4) RoP. See chapter 16 (Provisional and Protective Measures) paragraphs 16-21 to 16-28 where the substantive
requirements for provisional injunctions are discussed.
r.192(2)(c) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 346
