A guide to the UPC and the UP - Flipbook - Page 366
18-53 While the RoP only state that the report will be presented to the Court, it is assumed that the
parties will have access to it soon after the saisie has been carried out. It is reasonable to
assume that at the very least, the defendant will receive immediate access to the written report
via the person who carried out the measures in order to verify whether the report contains any
errors or confidential information that is not relevant to the issue of whether the patent is
infringed. Some indications about what is expected of the report may be gleaned from existing
national practice. For example, in France, the bailiff’s report usually includes (provided that the
order authorized the corresponding measures) a description of operations performed at the
premises of the seized party including the names of the persons met, answers to the bailiff’s
questions etc. and a description of the allegedly infringing products. Seized products and
documents comprising commercial, technical or advertising documentation, invoices etc.,
as well as photographs taken during the operations, are attached to the report. In Belgium,
the court-appointed expert must file a detailed written report with exhibits that can either be
directly attached to the report, partially redacted or put as such in a sealed envelope for use
only after infringement has been established in the main proceedings. When the described
product or process is allegedly protected by a trade secret the report can contain layers of
confidentiality whereby certain parts can only be disclosed after agreeing to specific
confidentiality measures between the alleged infringer and the patentee.
18-54 The applicant may have to wait to receive the report from the Court if valid objections are made
by the defendant regarding its confidentiality, either in whole or in part. But given the tight
deadline to initiate an action on the merits, 77 which cannot be extended, 78 the defendant
should formulate such objections quickly, and the Court should likewise make a quick decision
on these objections. It is therefore suggested that the Court’s order should contain specifics
about the sequence in which the report will be made available to the parties and the timing
thereof in order to facilitate the process.
18-55 The saisie order must state that the person carrying out the measures and presenting a written
report must do so “all in accordance with the national law of the place where the measures are
executed”. 79 Orders granted by the Court are considered to be orders from a national court in
all Contracting Member States, as provided by arts 71a(1) and 71d para.2 Brussels I Regulation,
but the enforcement of such orders is of course subject to public law and procedural law in
each of those Member States. This rule ensures that specific national laws for the enforcement
of Court orders are respected such as the presence of a bailiff charged with drawing a report
and ensuring that the sometimes invasive impact of the measure is not abused and is
sufficiently documented. 80
Attendance by Others when the Saisie is Carried Out
18-56 Under no circumstances is the presence of the applicant allowed at the execution of the saisie.
This includes all the applicant’s directors and employees. 81 The applicant may be represented
when the saisie order is carried out. The rules do not say by whom, but it is assumed that
patent attorneys and lawyers can represent the applicant and they will be named, probably
individually rather than by firm, and conditions may be applied. 82
77
78
79
80
81
82
r.198(1) RoP provides that the defendant may request the revocation of the order if “within a time period not exceeding
31 calendar days or 20 working days, whichever is the longer, from the date specified in the Court’s order with due account to
the date where the Report referred to in Rule 196.4 shall be presented, the applicant does not start proceedings on the
merits of the case before the Court”. See paragraph 18-63.
r.9(4) RoP.
r.196(4) RoP.
For instance via a “procès-verbal de saisie-contrefaçon”.
art.60(4) UPCA and r.196(5) RoP.
r.196(3)(a) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 356
