A guide to the UPC and the UP - Flipbook - Page 357
order for a saisie not be granted and at a later stage in the proceedings an order is made to
produce the evidence, 17 it will for whatever reason no longer be available. This might be
because of the transient nature of the evidence, for example, an item shown at a trade
fair or because the defendant has a track record of evading the Court’s orders. In contrast,
there would be little to no risk to the evidence sought where that evidence constitutes part
of a regulated activity; processes for drug manufacturing are heavily regulated and documented
in drug master files prepared for the health authorities and the destruction or alteration of such
documentation could expose the alleged infringer to more liability than the risk of being held
liable for patent infringement.
18-14 There is, unsurprisingly, a high threshold for ex parte applications. The Court can make such an
order where there is “a demonstrable risk of evidence being destroyed or otherwise ceasing to
be available”. 18 For the purpose of considering whether to hear the matter with or without the
defendant, the Court will consider the probability that evidence may be destroyed or otherwise
cease to be available; 19 the higher the probability, the more likely the matter will either be
heard ex parte or even that no oral hearing is needed before the order is made. 20
18-15 This suggests that where the application is heard inter partes, the applicant would only have to
show, on the normal balance of probabilities, that there is a risk to the evidence, such that an
order to preserve it is needed. It is unclear what level of risk the Court would consider justifies
an order, but it would have to be more than a mere suggestion by the applicant that the
evidence would not be produced at a later stage.
Evidence of Actual or Threatened Infringement
18-16 The applicant must present “reasonably available evidence” to support the claim that the
patent has been infringed or is about to be infringed. 21 The applicant will not have to show
(on a balance of probabilities) infringement, because that would frustrate the purpose of the
saisie, which is to preserve the evidence required to prove infringement. However, it seems
likely that the Court will not accept a mere statement of suspicion of infringement without
more. It is presumed that the applicant must be able to rely on some facts from which
infringement can be inferred and these facts and the inference to be drawn from them
should be set out in the application.
18-17 In Belgium it was generally accepted until the legislative reform of 2007, that stating that
there was a suspicion of infringement was sufficient to justify a request for a saisie description.
However, since 2007 and following the implementation of the Enforcement Directive, the law
requires claimants to submit indications of possible infringement or threats of future
infringement with the application. Similarly, according to French practice, before the
Enforcement Directive was implemented, the examination of the case was rather superficial,
focusing essentially on checking that the patent rights at issue existed, were in force and that
the applicant was entitled to initiate an infringement action on the merits. The practice has
evolved in recent years and the applicant must now bring preliminary evidence of the
infringement in accordance with the Enforcement Directive.
18-18 A similar standard might be expected by the Court. However, a certain amount of flexibility will
be required because the full extent of the claim may not be known at the time of making the
application and what is known may be circumstantial. After all, the purpose of the application
for the saisie is to find and secure evidence to support the claim.
17
18
19
20
21
Under art.59 UPCA and r.190 RoP. See paragraphs 18-86 to 18-106.
r.197(1) RoP. See paragraphs 18-68 to 18-88.
r.194(2)(c) RoP.
r.194(1)(c) and (d) RoP.
art.60(1) UPCA and art.7(1) Enforcement Directive.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 347
