A guide to the UPC and the UP - Flipbook - Page 367
18-57 In some countries the applicant’s patent attorney may be considered to be an independent
professional, offering sufficient guarantees for independence such that they are allowed to
provide the description or seize the alleged infringing goods. It is not clear, but r.196 RoP
appears to distinguish between the applicant’s representative (r.196(3)(a) RoP) and the person
who carries out the measures and provides the report (rr.196(4) and (5) RoP). Under French law,
it is the bailiff who performs the saisie and the patent attorney is only entitled to assist the
bailiff on technical issues. 83
18-58 The applicant should consider what independent experts will be needed in order to be able
to conduct the saisie. This not only may include an expert in the subject matter of the patent,
but since many documents are stored electronically, an IT expert may be needed to access
and find the relevant documents. In addition, the applicant should consider requesting that the
Court order the defendant to cooperate to the extent of providing access to and passwords for
document storage systems.
Use of the Evidence Obtained
18-59 The order for a saisie must specify that the evidence obtained may only be used in the
proceedings on the merits, unless the Court orders otherwise. 84
18-60 This rule is closely analogous to the restrictions applied in the UK to documents disclosed under
compulsion during the proceedings. Until deployed at trial such documents and their content
may only be used for the purpose of the proceedings in which they are disclosed, unless the
Court orders otherwise. A recipient of the disclosed documents must therefore be careful about
who else in their organisation is provided with copies of those documents, since use of the
information contained therein for purposes other than the proceedings may amount to a
contempt of court.
18-61 In some Contracting Member States, such as Belgium, the rules are more liberal in that the
evidence obtained following a saisie can be used in foreign preliminary proceedings or
proceedings on the merits. Also in Belgium, it has been debated whether the evidence obtained
could be disclosed to the applicant’s team that is responsible for conducting opposition
proceedings against the patent in issue before the EPO. Two court decisions exist that aim to
prevent auxiliary requests from being formulated in a manner such that the new claims would
still cover the allegedly infringing product after a saisie was conducted as those amendments
could not have been made without knowledge of the evidence obtained. 85 Since both the
conditions under which the evidence may be used and the possible amendments to the patent
will be dealt with by the same division of the Court, such a harsh position seems unnecessary.
18-62 Another issue that can arise is whether the evidence can also be used in related proceedings
such as ownership or licensing disputes, both of which need to be conducted in a national court
since the Court does not have competence of such matters. 86 The plain language of the rule
appears to prevent this and an order from the Court would have to be secured before such use
would be allowed.
83
84
85
86
Commercial chamber, 8 March 2005, No.03-15871.
r.196(2) RoP.
Brussels Appeal Court, 20 June 2008 (GSK v Sanofi Pasteur) and Brussels Appeal Court, 7 May 2009 (GSK v Novartis),
both critically commented on in IRDI 2009, 359.
art.32 UPCA.
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A Guide to the UPC and the UP 357
