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

IPPT20240301, UPC CFI, LD Paris, Novawell v C-Kore Systems
Ex parte order to perserve evidence (Article 60(5) UPCA, Rule 196 RoP, Rule 197 RoP).Timing: the execution of the measure to preserve evidence (saisie) in accordance with French law includes the service by the bailiff of the "procès-verbal de saisie" at the end of the operations, which is the procedural act that closes the seizure operations and informs the defendant of the content of the notice so it can request a review (Rule 197(3) RoP, Rule 300 RoP). According to Rule 300 RoP for the calculation of UPC periods, the relevant event for the calculation of the 30 days is the date of service of the bailiff's minute. In the present case, the 30-day period runs from 6 December 2023 and expires on 5 January 2024.  Reasonable available evidence of infringement to support order to preserve evidence (article 60(1) UPCA) based on (i) a Novawell commercial brochure displayed at an international exhibition held in Scotland on 23 February 2023; (ii) an extract from Novawell's public website describing its product called "SICOM"; (iii) a warning letter sent by C-Kore to Novawell with said brochure attached as Annex 2, and (iv) Novawell did not contest the content of the document or its origin. The fact that the commercial brochure was collected in an area outside the UPC's jurisdiction is irrelevant; does not affect the evidential value of that brochure, and it is not disputed that Novawell offers the SICOM product from its premises located in France. No reason for the Court to examine the validity of the patent in question at this stage. As C-Kore's patent is in force and there are no pending proceedings challenging its validity, the title is considered valid. For a matter of preserving evidence at an early stage of the proceedings, the Court rightly considered that the applicant had provided sufficient available reasonable evidence of the alleged infringement against Novawell by marketing the SICOM product, a very similar product to the “Cable Monitor”, C-Kore’s product which embodies the patent at issue. Novawell denies the existence of any infringement, arguing that its product "SICOM" does not reproduce all the features of claim 1 of EP 793. Ex parte measures can be based on any of the criteria mentioned in Rule 197 RoP; no conflict with non-exhaustive list of article 60(5) UPCA. Demonstrable risk of evidence otherwise ceasing to be available (Rule 197(1) RoP). In the case at hand, the defendant, having been informed of an imminent seizure, could have made certain computer data unavailable or moved its product to a location other than its premises in Montpellier. Request for preservation of evidence (“saisie”) (Rule 192 RoP) and request for inspection ("descente sur les lieux") (Rule 199 RoP) are two different and distinct procedures, each with a different purpose, the first being governed by Rules R. 192 to R. 198 RoP, in order to collect and seize evidence by detailed description or physically, and the second by Rule R. 199, in order to inspect products, devices, methods, premises or local situations in situ ("descente sur les lieux"). This means that there is no need to combine the two measures, even though the first obviously requires the right to enter a private place.  In the present case, the Applicant clearly states that it is requesting a seizure to be carried out at Novawell's premises, and the order expressly instructs the expert to enter the defendant's premises at the appropriate address. Preservation of evidence by an expert appointed by the Court and assisted by a bailiff is not in conflict with French national law and in conformity with Rule 196(5) RoP.

IPPT20231114, UPC CFI, LD Paris, C-Kore Systems v Novawell
Ex parte measure granted to preserve evidence, detailed description, physicial seizure of product and technical and promotional documentation an a written report by expert appointed by the Court (Article 58 UPCA, Article 60 UPCA, Rule 196 RoP, Rule 197 RoP)

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.

IPPT20230613, UPC CFI, LD Milan, Oerlikon v Himson II
Ex parte order to preserve evidence at trade fair (Article 60 UPCA, Rule 192 RoP). Extreme urgency exists considering that the international trade fair where the offending conduct is taking place started on 8.6.2023 and ends, tomorrow, on 14 June 2023. The prerequisites of Articles 197(1) RoP and 60(5) UPCA for the ex parte granting of the measure are met, since (a) time constraints do not allow the parties to be convened before the end of the trade fair tomorrow; (b) there is a risk that the evidence will no longer be accessible to the claimant once the exhibition is over, since the defendant is based abroad and the documents indicated are easy to conceal and/or destroy. Payment of fees (Rule 192(5) RoP, Rule 371(1) RoP: The Tribunal notes that pursuant to Section 371(3) RoP, in cases of urgency, when advance payment is not possible, the applicant's counsel must pay the fixed contribution within the time limit set by the Tribunal: in light of this limitation, the applicant must be ordered to pay this contribution by 15 June 2023.