Rule 198 – Revocation of an order to preserve evidence

1. The Court shall ensure that an order to preserve evidence is revoked or otherwise cease to have effect, upon request of the defendant, without prejudice to the damages which may be claimed, if, within a time period not exceeding 31 calendar days or 20 working days, whichever is the longer, from the date specified in the Court’s order with due account to the date where the Report referred to in Rule 196.4 shall be presented, the applicant does not start proceedings on the merits of the case before the Court.

2. Where the measures to preserve evidence are revoked, or where they lapse due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement of the patent, the Court may order the applicant, upon request of the defendant, to provide the defendant appropriate compensation for any injury caused by those measures [Rule 354.2].

3. The applicant shall pay a fee for the request under paragraph 1 in accordance with Part 6.

Relation with Agreement: Article 60(8) and (9)

Case Law:

Court of First Instance

IPPT20250722, UPC CFI, LD Munich, Nanoval v ALD Vacuum Technologies
Time period for starting proceedings on the merits following an order to preserve evidence (R. 198.1 RoP). Order of 18 March 2025 changing the start of the time period from 28 February 2025 to the date  on which the expert report will be made available has become final as the order of the judge rapporteur has not been submitted for panel review (R. 333 RoP). The length of the time limit of R. 198.1 RoP cannot be extended (R. 9.4 RoP) but the starting date of the time limit is at the discretion of the Court. This discretion also includes a subsequent change  of the starting date.

IPPT20250117, UPC CFI, LD Brussels, OrthoApnea
Start of proceedings on the merits is the date of uploading the (Dutch-language) Statement of Claim in the CMS (R. 198.1 RoP) 

IPPT20230917, UPC CFI, LD Brussels, OrthoApnea
Order following interim conference (R. 105 RoP). Parties need to indicate at the oral hearing how to balance the requested lifting of the seizure (of evidence) on counterfeiting (‘Order to Preserve Evidence’) under R 198(1) RoP, while making use of the findings in execution of the descriptive seizure. 

IPPT20240408, UPC CFI, LD Milan, PMA v AWM
No access to written report and any other outcome of the measures to inspect premises and to preserve evidence and revocation of the measures to preserve evidence because applicant did not timely start proceedings on the merits (Article 60(9) UPCA, Rule 198 RoP, Rule 9(4) RoP). Restitution of all evidence gathered through the execution of the revoked measures is to take place from 05.06.2024 on, unless the Court of Appeal decides otherwise (Article 74 UPCA, Rule 223 RoP). It is quite clear that an appeal could not be effective if this Court’s order for the return of the evidence gathered were given immediate effect. Damages claim dismissed (Article 60(9) UPCA, Article 54 UPCA, Rule 198(2) RoP). AWM and Schnell failed to allege, identify, and prove what concrete damage would have been caused by the enforcement of the measures, resulting in the dismissal of the claim, since – as provided for in Art. 54 UPCA – the burden of the proof of facts lies with the party relying on those facts.