Rule 196 – Order on the Application for preserving evidence

1. The Court may order, in particular, the following:

(a) preserving evidence by detailed description, with or without the taking of samples;

(b) physical seizure of allegedly infringing goods;

(c) physical seizure of the materials and implements used in the production and/or distribution of these goods and any related document;

(d) the preservation and disclosure of digital media and data and the disclosure of any passwords necessary to access them. For the protection of confidential information the Court may order that any of the above be disclosed only to certain named persons and subject to appropriate terms of non-disclosure.

2. An order to preserve evidence shall specify that, unless otherwise ordered by the Court, the outcome of the measures to preserve evidence may only be used in the proceedings on the merits of the case.

3. The order to preserve evidence shall be enforceable immediately, unless the Court decides otherwise. The Court may set conditions to the enforceability of the order, specifying in particular:

(a) who may represent the applicant when the measures to preserve evidence are being carried out and under what conditions;

(b) any security which shall be provided by the applicant. If necessary, the Court may set penalties applicable to the applicant if these conditions are not observed.

4. The order to preserve evidence shall specify a person who shall carry out the measures referred to in paragraph 1 and present a written Report on the measures to preserve evidence, all in accordance with the national law of the place where the measures are executed, to the Court within a time period to be specified.

5. The person referred to in paragraph 4 shall be a professional person or expert, who guarantees expertise, independence and impartiality. Where appropriate and allowed under applicable national law, the person may be a bailiff or assisted by a bailiff. In no circumstances may an employee or director of the applicant be present at the execution of the measures.

6. The Court may order the applicant to provide adequate security for the legal costs and other expenses and compensation for any injury incurred or likely to be incurred by the defendant which the applicant may be liable to bear. The Court shall do so where the order to preserve evidence was made without the defendant having been heard, unless there are special circumstances not to do so. The Court shall decide whether it is appropriate to order the security by deposit or bank guarantee.

7. The order to preserve evidence shall indicate that an appeal may be lodged in accordance with Article 73 of the Agreement and Rule 220.1.

Relation with Agreement: Article 60(1)-(4)

Case Law

IPPT20230925, UPC CFI, LD Milan, PMA v AWM

Ex parte order to inspect premises and to preserve evidence; confidentiality (articles 58 and 60 UPCA, Rules 196, 197 and 199 RoP). Urgency: two Girderflex apparatus have allegedly already been sold; at the end of July, another machinery has been offered for sale; AWM will be also present as a confirmed exhibitor at the BIBM Congress in Amsterdam and the commercial offer is still ongoing on AWM’s website. Reasons for ex parte: Data capture is Claimant’s main target and it is generally accepted that digital data can be easily hidden or erased if defendants are given previous notice of this kind of application. Experts are included in the list of patent experts who are used to cooperate with the national Courts, so that the choice guarantees expertise, independence and impartiality, as required by rule 196.5 RoP. Confidentiality: In accordance with art. 58 UPCA, rule 196.1 (d) and rule 199.1 RoP, the Court orders that the access to any information and document gathered by the experts in charge of carrying out the measure is prohibited, so to ensure effective protection of confidential information. Whether the Defendants should lodge a request for the review of this order according to rule 197.3 RoP, they are expressly invited to comment on any confidentiality interests that they might have after the written expert Report has been submitted by the experts appointed to carry out this order. Security: Pursuant to rule 196.3 and 196.6 RoP, the Court orders PMA to provide adequate security - also as a condition to the enforceability of this order - for the legal costs and other expenses and compensation for any injury incurred or likely to be incurred by the Defendants, by deposit of the amount of Euro 50.000, equal to 2,5% of the value of the case of Euro 2.000.000.