Article 60

Order to preserve evidence and to inspect premises

1.   At the request of the applicant which has presented reasonably available evidence to support the claim that the patent has been infringed or is about to be infringed the Court may, even before the commencement of proceedings on the merits of the case, order prompt and effective provisional measures to preserve relevant evidence in respect of the alleged infringement, subject to the protection of confidential information.
2.   Such measures may include the detailed description, with or without the taking of samples, or the physical seizure of the infringing products, and, in appropriate cases, the materials and implements used in the production and/or distribution of those products and the documents relating thereto.

3.   The Court may, even before the commencement of proceedings on the merits of the case, at the request of the applicant who has presented evidence to support the claim that the patent has been infringed or is about to be infringed, order the inspection of premises. Such inspection of premises shall be conducted by a person appointed by the Court in accordance with the Rules of Procedure.

4.   At the inspection of the premises the applicant shall not be present itself but may be represented by an independent professional practitioner whose name has to be specified in the Court's order.

5.   Measures shall be ordered, if necessary without the other party having been heard, in particular where any delay is likely to cause irreparable harm to the proprietor of the patent, or where there is a demonstrable risk of evidence being destroyed.

6.   Where measures to preserve evidence or inspect premises are ordered without the other party in the case having been heard, the parties affected shall be given notice, without delay and at the latest immediately after the execution of the measures. A review, including a right to be heard, shall take place upon request of the parties affected with a view to deciding, within a reasonable period after the notification of the measures, whether the measures are to be modified, revoked or confirmed.

7.   The measures to preserve evidence may be subject to the lodging by the applicant of adequate security or an equivalent assurance intended to ensure compensation for any prejudice suffered by the defendant as provided for in paragraph 9.

8.   The Court shall ensure that the measures to preserve evidence are revoked or otherwise cease to have effect, at the defendant's request, without prejudice to the damages which may be claimed, if the applicant does not bring, within a period not exceeding 31 calendar days or 20 working days, whichever is the longer, action leading to a decision on the merits of the case before the Court.

9.   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, at the defendant's request, to provide the defendant with appropriate compensation for any damage suffered as a result of those measures.

Case law

Court of Appeal

IPPT20250214, UPC CoA, Abbott v Sibio
Weighing of interest; irreparable harm (Article 60(5) UPCA; Article 62(2) UPCA). The interest of Sibionics to be able to enter and stay on the market during proceedings on the merits do not outweigh the interests of Abbott by an immediate injunction. The damages of Sibionics due to later market entry should the injunction be lifted in proceedings on the merit will be easier to quantify, whereas Abbott’s damages due to the long term effect of price erosion is difficult to quantify, also in view of its influence on the price of similar devices marketed by third parties and on the prices set by insurers. Sibionics discounts will ead to a negative price spiral which, especially in this type of market, is very difficult to reverse, thus causing irreparable harm to Abbott. 

IPPT20240723, UPC CoA, PMA v AWM
Application to preserve evidence or inspect premises implies a request to disclose the outcome of the measures (evidence) to the applicant and the procedure aims not merely to preserve evidence but also to disclose the evidence to the applicant (Article 60 UPCA, Rule 192 et seq. RoP). Order to preserve evidence or inspect premises must be subject to the protection of confidential information (Rule 196 RoP). Where the evidence may contain confidential information, this entails that the Court must hear the other party before deciding whether and to what extent to disclose the evidence to the applicant. The Court must hear the other party on the request for disclosure even if this party has decided not to file a remedy against the order to preserve evidence or inspect premises. For the revocation or otherwise ceasing to have effect of the measures (Article 60(8) UPCA) the Court must, as a general principle, specify in its order a time period that starts to run from the date of disclosure of the evidence to the applicant or from the date on which the Court has made a final decision not to grant the applicant access to the evidence.

Court of First Instance

IPPT20240925, UPC CFI, LD The Hague, DDT v Doytec
Ex parte order to preserve evidence (R. 197 RoP, Article 60(5) UPCA). Demonstrable risk of evidence being no more available once the SMT exhibition is over, for Doytec is based abroad and the technical and commercial documentation relating to C-1012 machine could easily be destroyed or otherwise ceasing to be available. The appointed expert (R. 196.5 RoP) shall lodge a written report, together with a full copy of all the documents acquired as a result of the execution of the measures, immediately and no later than two days after the completion of execution of the measures. The granting of an application for preservation of evidence or inspection of premises does not imply an unconditional order to disclose the evidence to the applicant (Article 60(1) UPCA). Pursuant to Article 60(1) UPCA the order must be subject to the protection of confidential information. Where the evidence may contain confidential information, this entails that the Court must hear the other party before deciding whether and to what extent to disclose the evidence to the applicant. In this context, the Court must give the other party access to the evidence and must provide that party with the opportunity to request the Court to keep certain information confidential and to provide reasons for such confidentiality.

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(8) 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.

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). 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.

IPPT20230921, UPC CFI, LD Brussels, OrthoApnea

Ex parte order to preserve evidence at symposium (article 60 UPCA). Urgency and irreparable because evidence may soon no longer be available in the territory. Ex parte (Rule 197(1) RoP): The applicant has sufficiently explained that irreparable damage may be caused to if the defendant is heard, because it is feared that in that case the infringing products will no longer be available at the symposium (Rule 192(3) RoP). No reason for a confidentiality regime as no seizure of confidential materials is sought and seizure will be made of materials publicly available at a symposium. No legal basis for order that the defendant has to cooperate. Counsel and a technical adviser of applicant allowed to be present.

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.