Rule 194 – Examination of the Application for preserving evidence
Print this page1. The Court shall have the discretion - including where the Application is made pursuant to Rule 192.3 - to:
(a) inform the defendant about the Application and invite him to lodge, within a time period to be specified, an Objection to the Application for preserving evidence which shall contain:
(i) the reasons why the Application shall fail;
(ii) the facts and evidence relied on, in particular any challenge to the facts and evidence relied on by the applicant;
(iii) where main proceedings on the merits of the case have not yet been started before the Court, the reasons why the action which will be started before the Court shall fail and an indication of the facts and evidence relied on in support;
(b) summon the parties to an oral hearing;
(c) summon the applicant to an oral hearing without the presence of the defendant;
(d) decide the Application without having heard the defendant.
2. In exercising its discretion, the Court shall take into account: (a) the urgency of the action; (b) whether the reasons for not hearing the defendant [Rules 192.3 and 197] appear well-founded; (c) the probability that evidence may be destroyed or otherwise cease to be available [Rule 197].
3. The presiding judge may decide that he or the judge-rapporteur or other single judge or the standing judge may decide on the Application.
4. In cases of extreme urgency the standing judge appointed in accordance with Rule 345.5 may decide immediately on an Application to preserve evidence and the procedure to be followed on the Application.
5. If the Court decides to inform the defendant about the Application the Court will first give the applicant the possibility to withdraw the Application. In the event of such withdrawal the applicant may request that the Court shall order that the Application and its contents shall remain confidential.
6. If the patent the subject of the Application is also the subject of a Protective letter pursuant to Rule 207 the applicant may withdraw the Application pursuant to paragraph 5.
Case Law:
Court of Appeal
IPPT20250715, UPC CoA, Valinea v Tiru
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.
Court of First Instance
IPPT20251118, UPC CFI, LD Düsseldorf, Lina v Schultz
IPPT20251118, UPC CFI, LD Düsseldorf, Lina Medical v Tonglu Qianyan
Ex- Parte order for Preservation and inspection of evidence granted (Art. 60 UPCA, R 192, R. 194 (d), 197, 199 RoP). Applicant has credibly demonstrated that the “disposable morcellator“, exhibited at the MEDICA exhibition in Düsseldorf, makes use of the teaching of the patent in suit . All features set out in claims 1 to 6 of the patent are implemented. With the exception of the labelling, the product which is presented by the Defendant is identical in appearance to the American product examined by the Applicant. The Applicant has demonstrated why the proposed measures are needed to preserve evidence without hearing the Defendant.
IPPT20251117, UPC CFI, LD Düsseldorf, Komax v Jiangsu
Ex – parte order for inspection and preservation of evidence granted for the respondent’s exhibition booth at an upcoming trade fair, pending validity proceedings. (Rule 192, Rule 194, Rule 197, 199 RoP). The “BZW3005” machine, which is expected to be exhibited at “Productronica” in Munich, may make use of the technical teaching of of the patent
IPPT20251117, UPC CFI, LD Düsseldorf, Otec v Steros
Unredacted version of the expert’s description following an order for inspection and preservation of evidence disclosed to the applicant. (Article 60 UPCA, Rule 196, Rule 194, 199 RoP). Respondent has not asserted confidentiality interests with regard to the information contained in the description provided by the expert. An order for inspection and preservation of evidence must contain a statement that the results of these measures may only be used in the relevant proceedings on the merits (unless the court orders otherwise).
IPPT20251112, UPC CFI, LD Brussels, Organon v Genentech
Ex parte orders to preserve evidence and for inspection confirmed (R 197.3 RoP. R. 199 RoP). Facts and evidence to be taken into consideration include all facts and evidence presented to the Court by the parties. (Rule 194.3(b) RoP). As such, the general purpose of an order to preserve evidence/for inspection is to: a) anable an applicant who has "presented reasonably available evidence to support the claim" to access additional information that is not publicly available to prove the infringement and the acts constituting infringement, and b) If granted, based on the preserved information, enable the applicant to evaluate the reliable prospects of success in initiating infringement proceedings. “About to be infringed” in Art. 60 UPCA does not have the same meaning as “urgency” (in R. 194(2) RoP) or “unreasonable delay” in R. 211.4 RoP: must be a plausible a risk of infringement and it must be apparent that it will occur in the future. According to Art. 60(5) UPCA measures shall be ordered ex parte, where delay is likely to cause irreparable harm, or where there is a demonstrable risk of evidence being destroyed. “Ugency” is only one of the elements that the Court should consider when exercising discretionary powers and, therefore, cannot be considered a compulsory precondition for granting the requested measures “ex parte”.
IPPT20251030, UPC CFI, LD Düsseldorf, Van Loon v Inverquark
Ex-parte order for inspection and preservation of evidence granted. (Article 60 UPCA, Rule 192 ,196 RoP). The inspection and preservation of evidence is urgent. (R. 194. 2 b) Sufficient substantiation of the infringement can only be provided by examining the product exhibited at the trade fair, which would involve taking measurements and, if necessary, opening the counterflow system. It was not possible for the applicant to carry out a test run, take detailed measurements, or dismantle the product that it obtained from a Distribution customer. The product is no longer available from the distribution customer. Order issued ex parte : demonstrable risk that evidence would be destroyed or would no longer be available.(Rule. 192.3, 197 RoP)There is a serious risk that the "InverJet" will be removed from the exhibition grounds at short notice. it would be almost impossible for the applicant to obtain evidence of what it considers to be an infringement of the patent in question by the aforementioned product.
IPPT20250922, UPC CFI, LD Düsseldorf, Otec v Steros
Ex parte order for inspection and preservation of evidence granted. (Art. 60 UPCA, Rule. 194 (d), 196, 197, 199 RoP). Credible demonstration that the patent may be infringed. (Article 60 (1) UPCA). The product, as exhibited at the EMO Hannover trade fair, makes use of the technical teaching of the patent. All features of the patent are realized in the "DLyte PRO500 Automated Cell" product. The application is urgent (R. 194. 2 b), c), 197 R.P.). There exists a serious risk that the product will be removed from the exhibition grounds at short notice. Due to special market conditions, it would be almost impossible for the applicant to obtain evidence of the infringement of the of the patent. Expert appointed to carry out the measures with the assistance of a bailiff. (Rule 196.4, .5 RoP). An order of security would unreasonably delay the preservation of evidence and inspection, considering the short duration of the trade show.
IPPT20250904, UPC CFI, LD Düsseldorf, Ecovacs Robotics v Roborock
Detailed ex parte order to preserve evidence and inspect premises (Article 60 UPCA, R. 194.2a RoP, R. 196 RoP, R. 197 RoP, R. 199 RoP). Even an imminent infringement in Germany is sufficient to establish the local jurisdiction of the German Local Divisions (Article 32(1)(c) UPCA, Article 33(1)(a) UPCA). In view of the circumstances of the case […] it is possible that the contested embodiments will be exhibited at IFA 2025 and that they will make use of the technical teaching of the patent in suit. The applicant, who is the owner of the patent application and has standing to sue, has provided a comprehensible explanation, based on an expert statement (Exhibit JD 10) and various product documents (Exhibits JD 7 to 8, Exhibits JD 11 to 14), as to why it assumes that all features of the patent application are realised in the contested embodiments. The order was to be issued ex parte pursuant to R. 192.3, 197 RoP. Otherwise, there would be a demonstrable risk that evidence would be destroyed or would no longer be available for other reasons (R. 197.1 Alt. 2 RoP).
IPPT20250324, UPC CFI, LD Paris, Tiru v Maguin
Review dismissed of ex parte order to preserve evidence and inspect premises (R. 197.4 RoP). No lack of urgency (R. 194.2 RoP): a two-month period to prepare the application for preservation of evidence appears reasonable, as the applicant for seizure is required under Article 60.1 UPCA to present reasonably accessible evidence to support its allegations that its patent has been infringed or that infringement is imminent.
IPPT20241223, UPC CFI, LD Paris, Tiru v Maguin
No extreme urgency requiring an immediate decision by the standing but only urgency (R. 194.4 RoP). The urgency in this case being the risk of the furnace in question being put into operation in the first quarter of 2025, i.e. at the earliest in early January 2025
IPPT20241018, UPC CFI, LD Dusseldorf, Bekaert v Siltronic
Order for inspection and preservation of evidence granted (Article 60 UPCA , Rule. 192 , 199 RoP) The application is urgent and issued ex parte (Rule. 194.2 a),b),c) 197 RoP).Despite the pre-trial correspondence, the first respondent has neither issued a cease-and-desist declaration nor provided information about the manufacturer from whom it obtains the saw wires. Without the application, the applicant will not be able to ascertain the origin of the wires that may infringe the patent. Once the stock of saw wires has been used up by the first respondent, the applicant will no longer be able to secure evidence and will not be able to examine the wires in question. It is not detrimental that the applicant has been aware of the wires since March 2024 and that the revocation of the opt-out was not registered until September 2025 however. Before the opt-out was revoked, the applicant was unable to file the application before the UPC. In view of the fact that the UPC is still a relatively new court system, the Chamber does not consider it detrimental to urgency at this stage if the party makes strategic considerations as to whether to submit a patent to the jurisdiction of the UPC and if these considerations take a certain amount of time.There is currently a risk that the respondent will transfer the remaining wires to one of its other production sites.
IPPT20230614, UPC CFI LD Milan, Oerlikon v Bhagat
Ex parte order to preserve evidence at a trade fair (Article 60 UPCA, R. 192 RoP, R. 194 RoP). Prima facie case. For an order preserving evidence, only indicia of infringement are required to justify preservation of evidence, Photos, technical opinion, and video evidence suggest reproduction of patented features (i.e. infringement). Formal requirements for evidence preservation (R. 192 RoP). Claimant must provide a clear identification of measures and location. In this request the evidence targeted at the defendant’s trade fair stand. Claimant must establish the necessity of measures established. This is linked with establishing likelihood of infringement. Urgency. The allegedly infringing activity was ongoing at the trade fair and was about to end. This causes extreme urgency. A risk of loss of evidence is established as it could disappear after the event, especially given the defendant’s foreign location. Consequently, it is not necessary to hear the other party. Security (R. 196.6 RoP): No prior guarantee imposed due to the urgency and non-intrusive nature of the measure.
IPPT20230613, UPC CFI, LD Milan, Oerlikon v Himson
No extreme urgency requiring standing judge to decide on application to preserve evidence (Rule 194(4) RoP, Rule 345 RoP). The claimant argues that the order for preserving evidence is extremely urgent due to the end of the fair in Milan, which will end on the 14th of June. The application has been lodged on the 12th afternoon. At this stage, it is still possible for the presiding judge in the local division of Milan to make an urgent decision before the end of the fair.
