A guide to the UPC and the UP - Flipbook - Page 373
18-82 Where an order is made ex parte, the defendant has the option within 30 days of execution
of the saisie to request a review. 106 A request for review must set out:
– Why the order should be revoked or modified; and
– the facts and evidence relied upon.
18-83 If such a request is made, there will be an oral hearing without delay 107 at which the Court
has the power to modify, revoke or confirm the order. Where the order is modified or revoked,
“the Court shall oblige the persons to whom confidential information has been disclosed to
keep this information confidential”. 108 This raises the interesting question as to how confidential
terms might be applied retrospectively to information already in the hands of the applicant.
Ideally, this issue will have been considered when the Court made the original order, but
problems may arise if the Court did not anticipate that certain details disclosed during the
execution of the saisie would be considered confidential. This rule also highlights a more
general point with respect to the Court’s ability to police the confidentiality terms it has
imposed and its jurisdiction to enforce them. Following the review, the unsuccessful party
may appeal the decision. 109
Orders for Inspection
18-84 An applicant can apply for an order to inspect products, devices, methods, premises or local
situations in situ. 110 Substantially the same procedure applies to an order for inspection as
to an order for preserving evidence with both orders subject to the same safeguards and
restrictions. 111 The fee is also €350. 112
18-85 Neither the UPCA nor the RoP make clear what, if any, difference exists between an order for
preserving evidence and an order for inspection. From the names given to them by the RoP,
it might be thought that an order for inspection would be granted where the thing to be
inspected is immovable or a process. But this ignores the fact that a saisie can be ordered
which preserves evidence by taking a detailed description which could therefore be of an
immovable thing or a process. Turning to art.60 UPCA, the position is no clearer. One possibility
may be that the saisie is expressly limited to evidence in respect of alleged infringement
compared to the order for inspection which, whilst based on evidence of alleged infringement,
is not expressly limited to the inspection of premises containing evidence of the alleged
infringement. It is possible therefore that an order for inspection may be made in relation to
premises where there is not thought to be evidence of infringement per se, but some other
relevant reason for the inspection exists, although such a reason is hard to imagine. 113
106
107
108
109
110
111
112
113
r.197(3) RoP.
r.195 RoP. See paragraphs 18-43 and 18-44.
r.197(4) RoP. Note that r.262 RoP relating to public access to the register is stated to be subject to r.197(4) RoP.
See paragraph 18-66.
art.60 UPCA and r.199 RoP.
r.199(2) states that rr.192 to 198 RoP apply mutatis mutandis.
r.370 RoP.
If art.60(3) UPCA was not expressly limited to requests from applicants who present evidence of infringement, then it might
be thought that this was the correct distinction and that perhaps orders for inspection were intended to be used by nonpatentees in, for example, actions for revocation. But, obviously, this is not the case as art.60(3) UPCA is not so limited.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 363
