A guide to the UPC and the UP - Flipbook - Page 365
18-48 In addition to specifying the nature of the saisie, the order must provide for certain other
matters. These include:
– The name of the person who will carry out the order and provide a report to the Court by a
specified date; 67
– A statement that, unless otherwise provided, the evidence obtained may only be used for
the proceedings on the merits of the case; 68
– If the application is heard ex parte and unless there are special circumstances not to do so,
the Court shall order security. (Where the application is made inter partes, ordering security
is at the discretion of the Court). The security is intended to cover the defendant’s legal costs
and other expenses and compensate the defendant for any injury incurred or likely to be
incurred for which the applicant may be liable where the order is enforced but then it is
found that there has been no infringement; 69 and
– Notice to the defendant that the order may be appealed. 70
18-49 The Court may also attach other conditions to the enforcement of the order, including:
– The name of the persons who can represent the applicant when the saisie is being carried
out 71 (which cannot include directors or employees of the applicant); 72
– Provisions for the evidence to be disclosed only to named persons to preserve the
confidential nature of the evidence; 73 and
– Any penalties applicable to the applicant if the conditions in the order are not observed. 74
18-50 The default position is that the order must be enforced immediately, but the Court may
order otherwise. 75
The Person Responsible for Carrying Out the Saisie
18-51 The Court must identify a person who will present a written report to the Court on the carrying
out of the order within a specified time frame. The person shall be a professional person or
expert, who guarantees expertise, independence and impartiality. 76 Where appropriate and
allowed under the applicable national law, the person may be a bailiff or assisted by a bailiff.
18-52 Where the order is for providing a description, it would be preferable to appoint a specialised
and independent professional such as a patent attorney, who can describe the infringing
product or process to the required level of detail and will only describe what is relevant for
purposes of determining infringement. The major advantage of such an independent
professional is that the risk of inadvertent disclosure of confidential information which
is not relevant to the issue of infringement can be substantially reduced.
67
68
69
70
71
72
73
74
75
76
r.196(4) RoP.
r.196(2) RoP.
r.196(6) RoP. If the applicant fails to provide adequate security within the time specified, the Court may give a decision by
default (r.158(5) RoP). For further information on making an order binding on the provision of security see chapter 19
(Enforcement) paragraphs 19-46 to 19-64.
r.196(7) RoP.
r.196(3)(a) RoP.
art.60(4) UPCA and r.196(5) RoP.
r.196(1) para.2 RoP.
r.196(3) para.2 RoP. Typically, periodic penalty payments may be ordered, the value of which is determined by the Court
according to the importance of the order (r.354(3) RoP).
r.196(3) RoP.
r.196(5) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 355
