A guide to the UPC and the UP - Flipbook - Page 372
18-76 Furthermore, if the application is heard ex parte, security must be provided by the applicant
for the defendant’s legal costs, other expenses and compensation for any injury incurred or
likely to be incurred by the defendant, 100 unless there are special circumstances not to do so.
Special circumstances might arise in cases of extreme urgency, where the applicant has not
had time to organise the appropriate security which is expected to be given either by way of a
deposit or bank guarantee. The Legal Group of the Preparatory Committee also suggested that
special circumstances might also exist where no damage could be inflicted by the exercise of
the saisie or where only a sample of an inexpensive mass-produced item is sought. 101
Opportunity to Withdraw the Application
18-77 If the Court decides to inform the defendant about the application, the applicant will be given
an opportunity to withdraw it and may request that the application and its content remain
confidential. 102 The wording indicates, although it is not absolutely clear, that the Court should
inform the applicant prior to informing the defendant of the application and therefore prior
to the determination of the substantive application.
18-78 This right is important for the applicant: an application that is intended to be filed and granted
without the defendant being heard may be structured and argued differently to one where the
defendant will have the right to respond. For that reason, the applicant has the right to
withdraw the application and to possibly file it again in a different form, or to withdraw the
application and prepare to file an action on the merits without alerting the defendant to the
fact that proceedings are imminent.
18-79 However, this assumes that the Court will always grant the request that the application remains
confidential. The combination of rules relating to the confidentiality of an application for a saisie
make it clear that such applications and their contents are intended to remain confidential. 103
18-80 The applicant is also given the opportunity to withdraw the application for a saisie if the patent,
which is the subject of the application, is also the subject of a protective letter. 104 Since the
applicant’s opportunity to withdraw is stated to be pursuant to r.194(5) RoP, the same
provisions on confidentiality will apply.
Review of the Order
18-81 If an order has been made ex parte, the defendant must be given notice immediately at the
time of the execution of the saisie. 105 This provision is not fully in accordance with and may
contradict art.60(6) UPCA which specifies that the “affected parties shall be given notice, without
delay and at the latest immediately after the execution of the measures”. Moreover, it is not
specified who is to give this notice. However, from a practical standpoint, the Court can clarify
how the defendant is to be notified when it makes the order.
100
101
102
103
104
105
rr.196(3)(b) and 196(6) RoP.
“Table with explanatory notes to the changes made by the Legal Group of the Preparatory Committee in the 17th draft of the
Rules of Procedure” 31 October 2014, p.13.
r.194(5) RoP. Note that r.262 RoP relating to public access to the register is stated to be subject to, inter alia, r.194(5) RoP.
r.192(3) RoP states that “The application shall not be entered on the register until notice has been given to the defendant”
and r.194(5) RoP states that “the applicant may request that the Court shall order that the Application and its contents shall
remain confidential”.
rr.194(6) and 207 RoP. For further discussion of protective letters, see chapter 16 (Provisional and Protective Measures)
paragraphs 16-73 to 16-89.
r.197(2) RoP. This rule states that where measures are ordered without hearing the defendant, the same rules as govern an
inter party hearing apply and in such cases the defendant is notified immediately at the time of execution. It is assumed that
the same provision in relation to notice applies whether or not an oral hearing has taken place.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 362
