A guide to the UPC and the UP - Flipbook - Page 358
Confidentiality
18-19 An order will be made “subject to the protection of confidential information” 22
Consequently, if there is likely to be confidential information belonging to the defendant
in the materials seized, the applicant should consider how to preserve the defendant’s
confidentiality very carefully, making provisions for such matters in the application, for
example, by suggesting it should be disclosed to a very limited number of named people.
Form of application and its contents
18-20 R.192(1) RoP specifies that an application for a saisie must contain the following:
– Particulars in accordance with r.13(1)(a) to (i) RoP i.e., the names of the claimant and
defendant and their respective addresses for service; evidence that the claimant, if not
the proprietor or sole proprietor of the patent, is entitled to bring proceedings; 23 details of
the patent; details of any prior pending proceedings; and reasons why the division to which
the application is made has competence; 24
– A clear indication of the measures requested; 25
– The reasons why the proposed measures are needed to preserve the relevant
evidence; 26 and
– The facts and evidence relied on in support of the application. 27
18-21 The request for the measures to be included in the order should be drafted as clearly as
possible since courts, in many cases, copy them verbatim into the order and it is likely the
Court will do the same. The measures that can be requested include: 28
– Preserving evidence by detailed description, with or without the taking of samples;
– Physical seizure of allegedly infringing goods;
– Physical seizure of the materials and implements used in the production and/or distribution
of these goods and any related document; and
– The preservation and disclosure of digital media and data, and the disclosure of any
passwords necessary to access them.
18-22 The applicant should name the exact location of the evidence to be preserved where it is known
or, with good reason, is suspected by the applicant. The request should also name the person
who will carry out the measures and include all relevant information about them to enable the
Court to check that they have the necessary expertise, independence and impartiality. 29
22
23
24
25
26
27
28
29
art.60(1) UPCA.
art.47 UPCA sets out the parties entitled to bring actions before the Court, namely, the patentee and licensees.
Exclusive licensees are entitled to bring actions before the Court provided that the patent proprietor is given notice
and the licensing agreement does not provide otherwise (art.47(2) UPCA). Non-exclusive licensees are not entitled to bring
actions before the Court unless expressly permitted to do so by the licensing agreement and then they must still give prior
notice to the patent proprietor (art.47(3) UPCA).
r.192(2)(a) RoP.
r.192(2)(b) RoP.
r.192(2)(c) RoP.
r.192(2)(d) RoP.
art.60(2) UPCA and r.196(1)(a) to (d) RoP.
rr.196(4) and (5) RoP. See paragraphs 18-51 to 18-55.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 348
