A guide to the UPC and the UP - Flipbook - Page 359
18-23 Reasons why the application is needed and the facts and evidence relied on in support of the
application must be included. This will include the risk to the evidence sought to be preserved
and evidence that the patent is infringed or infringement is imminent. 30 Where the application
is made before the main proceedings have begun, it must also contain a concise description of
the action which will be brought before the Court, including an indication of the facts and
evidence which may be relied on in support. 31 The requirement for a “concise description”
appears to acknowledge that the applicant should not be required to put in evidence for its
entire case at this stage. Indeed, it must be remembered that the object of the saisie is to
preserve evidence relevant to infringement. Nevertheless, the Court has to satisfy itself with a
sufficient degree of certainty that the applicant has a case; the degree of certainty that will be
sufficient is, however, not explained, leaving the Court with a wide discretion.
Procedural Requirements
Where to Lodge the Application for a Saisie
18-24 The application for a saisie must be lodged at the division where the applicant has already
commenced infringement proceedings or where it intends to start such action if it has not yet
done so. 32 Thus the division that handles the application will also be the division that handles
the merits of the case.
18-25 Such a rule also has drawbacks. Firstly, the applicant for a saisie will need to decide very early
on where to file the main proceedings. When applying for a saisie, the applicant cannot keep its
options open and can only decide where to file the main proceedings once the evidence has
been received following the execution of the saisie. However, it is conceivable that in certain
circumstances, even though the saisie was lodged at the local division where the applicant
thought there was infringement occurring or there was a threatened infringement, the
evidence reveals importation of the infringing product by a third party from a very different
location and the patent proprietor may need to bring main proceedings before another
division. 33 This situation is not provided for by the RoP and there are no rules providing for
the transfer of cases between local divisions. It would therefore be preferable if the Court
would be willing to be flexible in its reading of the requirement that the applicant “intends” to
start proceedings on the merits at the same division where the saisie was lodged. This would
enable the applicant to retain the option of bringing main proceedings before another division
if the circumstances so justify.
18-26 The second drawback relates to carrying out the saisie. The evidence may need to be collected
in a different Contracting Member State to the Contracting Member State where the seized
division is located. As the saisie has to be carried out in accordance with the national law of
the place where the measures are to be executed, this may require additional steps such as
translating the order.
30
31
32
33
Discussed above at paragraphs 18-13 to 18-18.
r.192(2) para.2 RoP.
r.192(1) RoP.
e.g. because the division of the Court of First Instance where the saisie was lodged does not have competence under
art.33 UPCA.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 349
