UPC Court of Appeal, 15 July 2025, Appeal against ex parte order to preserve evidence rejected
16-10-2025 Print this page
Appeal ex parte order to preserve evidence and inspect premises rejected (R. 194 RoP, R. 196 RoP).
When examining an Application for preserving evidence, the Court exercises its discretion by taking into account the urgency of the action (R. 194.2(a) RoP) in order to determine whether, and to what extent, it wishes to hear the defendant (R. 194.1(a) RoP), summon the parties to an oral hearing (R. 194.1(b) RoP), summon the applicant to an oral hearing without the presence of the defendant (R. 194.1(c) RoP), or decide the Application without having heard the defendant (R. 194.1(d) RoP). In exercising its discretion, the Court examines the reasons why the proposed measures are needed to preserve relevant evidence (R. 192.2(c) RoP), as well as the facts and the evidence relied on in support of the Application (R. 192.2(d) RoP).
Urgency. It is necessary to distinguish between the assessment of urgency in the context of an Application for preserving evidence (R. 194.2(a) RoP) and the assessment of urgency in the context of an Application for provisional measures (R. 209.2(b) RoP). In exercising its discretion to determine whether provisional measures should be ordered, the Court shall also have regard to any unreasonable delay in seeking provisional measures (R. 211.4 RoP). No such requirement is imposed either by the UPC Agreement or by the Rules of Procedure when assessing whether an Application for preserving evidence should be granted.
Urgency (R. 194.2 RoP) can be present if the evidence may become difficult to access after a given date or action. Under normal circumstances, a two month period from becoming aware of possible infringement to making the application to preserve evidence does not negatively affect the urgency. Unlike with an application for provisional measures, there is no general requirement to avoid an unreasonable delay for the preservation of evidence.
Risk of destruction (R. 194.2(c) RoP, R. 197.1 RoP).
The risk of the destruction or unavailability of the evidence, as a criterion for assessing the merits of ex parte measures, concerns both access to the allegedly infringing furnace and the associated technical documentation. The assessment of the risk in question must be based on the probability (R. 194.2(c) RoP) or the demonstrable risk (R. 197.1 RoP) of evidence being destroyed or otherwise ceasing to be available, and not on the certainty of its disappearance or unavailability.
Applicant’s duty of candour (R.192.3 RoP).
Unlike with provisional measures, the Court does not have to be satisfied – with a sufficient degree of certainty – that the patent is valid in order to grant an order to preserve evidence. As such, a fact that may influence the validity of the patent at issue does not constitute a “material fact” which might influence the Court in deciding whether to make an order without hearing the defendant. A document expressly cited in the patent at issue cannot be regarded as one that must be disclosed under the duty of candour set out in R. 192.3 RoP. It is not for the applicant seeking measures to preserve evidence, at the stage of the application, to identify and disclose prior art of which it may be aware, unless such prior art is, for specific reasons, likely to influence the ex parte decision to be taken.
