A guide to the UPC and the UP - Flipbook - Page 360
18-27 Where evidence must be collected in Contracting Member States where ex parte saisie
proceedings are available, subject to national law, local procedures could offer a faster and
cheaper route, saving time and avoiding complications for the applicant. The UPCA does not
appear to prohibit use of evidence gained in national proceedings, since only the matters for
which the Court has exclusive competence are the types of proceeding listed in art.32 UPCA,
which are not expressed to cover measures for taking evidence, such as those listed in art.60
UPCA. 34 Consequently, the results of national measures for taking evidence could be used
before the Court and a national saisie could be used to gather evidence needed to start an
infringement action on a Unitary patent or a European patent depending, of course, on national
rules on the use of such evidence. 35 Under art.7(3) Enforcement Directive, such measures need
to be followed in a timely fashion by proceedings leading to a decision on the merits on the
case, but those may be proceedings before the Court.
Language
18-28 Where the main proceedings have already been started, the application will be made in the
language of those proceedings. 36 If the application is made before main proceedings have been
started, r.14 RoP on the use of language applies mutatis mutandis. 37 This rule does not exclude
the possibility that in the divisions that work in more than one language, the ex parte procedure
for preserving evidence is processed in a different language to the main proceedings started
afterwards before that same division. This can, again, depend on what the evidence reveals
and who is ultimately sued as co-defendant in the main proceedings.
Payment of Fees
18-29 A fee of €350 38 must be paid for an application and the application is not considered to have
been made until the fee is paid. 39 The fee is in addition to the fee payable in relation to the
action on the merits.
Assignment of the Application and Urgent Applications
18-30 Once the application for a saisie has been made, it is reviewed for formal requirements and
allocated to a panel or judge. In summary:
– If main proceedings have not yet started, the Registry examines the application in much the
same way as a new action. 40 The formalities will be checked, 41 the application will be
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36
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The alternative view is that art.60 UPCA provides for orders to preserve evidence for the purpose of litigation before the
Court and art.32 UPCA means that national courts do not have jurisdiction to order the collection of evidence for the purpose
of enforcement of a Unitary patent or a European patent that is already the subject of litigation in the Court. By parity of
reasoning, use of a national court to order the collection of evidence for the purpose of enforcement of a European patent
which is not already the subject of litigation in the Court and has not been opted out could have the effect of precluding its
being the subject of litigation in the Court. Such concerns could be circumvented in certain circumstances where national law
allows the claimant to collect evidence without specifying what the patent is and allows the claimant to choose afterwards
which patent to assert in the main proceedings.
The converse would not automatically apply. R.196(2) RoP states that unless otherwise ordered by the Court, the outcome of
the measures to preserve evidence may only be used in the proceedings on the merits of the case.
r.192(4) RoP.
See chapter 11 (Overview of Procedure and General Procedural Provisions) paragraphs 11-107 to 11-130.
r.192(5) and part 6 RoP.
r.15(2) RoP.
See chapter 12 (Written Procedure) paragraphs 12-50 to 12-54.
r.193(1) RoP referring to r.16 RoP. The formalities to be checked include those matters in r.192(1) RoP i.e., the names of the
claimant and defendant and their respective addresses for service, evidence that the claimant is, if not the proprietor or sole
proprietor of the patent, entitled to bring proceedings, details of the patent, any prior pending proceedings and reasons why
the division has competence. It will also include the measures requested (r.192(2) RoP), whether copies of documents
referred to in the application have been supplied (r.13(2) RoP), the use of language (r.14 RoP) and payment of the fee
(r.15 RoP).
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 350
