A guide to the UPC and the UP - Flipbook - Page 364
18-44 The application will be rejected if the applicant does not attend without a reasonable excuse. 63
The Court’s decision must be given in writing as soon as possible after the hearing but the Court
may announce the decision orally at the end of the hearing, provided the written decision is
given as soon as practicable thereafter. 64
Order on the Application for Preserving Evidence
18-45 The types of saisie orders that can be made by the Court are as follows: 65
– 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.
18-46 The term “detailed description” used in both art.60(2) UPCA and r.196(1)(a) RoP, comes from
art.7(1) Enforcement Directive. It might, at first glance, suggest that the evidence requires the
intervention of a third person who will describe the alleged infringement. However, there does
not seem to be consensus that this is the correct interpretation. In some jurisdictions where
saisies already take place, a description is often drafted on the basis of the language of the
patent claims. This facilitates, on the one hand, a comparison between the alleged infringement
and the claims, and on the other hand, prevents details being described that are irrelevant to
the patent. However, to others, this would appear to be a very one-sided approach. Unless the
construction of the claims is wholly uncontroversial, which it rarely is, it is difficult to see how
the description could be drafted in precise, neutral terms whilst ensuring that all necessary
parts of the product or process concerned are adequately described. An alternative approach is
found in France, where saisie orders commonly provide that the description can be performed
by any means including taking photographs, photocopies or video recordings. This would
appear to provide a useful and sensible way of interpreting this expression for the Court.
18-47 The list setting out the types of saisie is non-exhaustive as it is preceded by the words
“in particular, the following”. The Court therefore has the power to make other orders not
specifically provided for in r.196(1) RoP provided they are within the scope of art.60 UPCA.
But art.60 UPCA is silent on whether the Court can order the description and/or the seizure
of documents that would enable the patentee to assess its damages, such as accounting
documentation, pricing information, invoices, volumes of stocks and order books. Arguably,
an order for such information falls within the breadth of art.60(1) UPCA as it covers all evidence
“in respect of the alleged infringement”. However, there are other specific provisions in both the
UPCA and RoP that relate to the production of such information 66 and therefore the Court will
default to using these provisions unless there are good reasons for ordering such information
be produced by way of a saisie.
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r.195(2) RoP and to that extent varies r.116(3) RoP which states that if a party does not attend, it shall be treated as relying
only on its written case.
r.195(3) RoP. As noted in chapter 16 (Provisional and Protective Measures) paragraph 16-53, although the RoP do not say so
in terms, this suggests that the Court may make an order or reject an application at the end of a hearing without giving
detailed reasons and then provide detailed reasons later. This practice is common in at least Germany.
r.196(1)(a) to (d) RoP.
arts 59(2) and 67(1) UPCA, rr.190 to 191 RoP (orders to produce evidence and communicate information) and rr.141 to 144
RoP (request to lay open books).
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 354
