UPC Weekly - Now let’s talk about saisies

2024 Week 32

There is no discovery at the UPC.

In common law jurisdictions, such as England and the US, there is an obligation on the parties to disclose documents in their control which are helpful for their case, but also documents which may be adverse to their case or which support the other party’s case. The purpose of discovery is: (a) to ensure equity as between the parties by giving them access to all the relevant documents that have a bearing on the case, (b) to provide information to the court, (c) to facilitate settlement of the dispute without trial, and (d) to narrow the issues in dispute.

But discovery is not a part of the litigation tradition in many other European Patent Convention countries. Discovery also does not form part of the Unified Patent Court (UPC) rules. Instead, it is for the claimant to secure the necessary evidence to support their case. This evidence may be secured from public sources (for example webpages advertising the sale of an infringing product), trap purchases or private investigations. However, without discovery a claimant may be significantly disadvantaged in proving their case. For example, consider the difficulty in securing evidence of the use of a patented process in a private industrial setting.

To address this difficulty, some EU countries have judicial tools that allow a claimant to secure evidence from the defendant. The most notable example is the saisie contrefaçon procedure available in France to allow the claimant’s representatives and a bailiff to enter the defendant’s premises, and to search for and secure information identified in the order relevant to the patent case.

The UPC Agreement (UPCA) incorporates this legal principal of the French saisie in the form of an “order to preserve evidence” (Article 60(1) UPCA) and an “order for inspection” (Article 60(3) UPCA).

If you want to apply for a UPC saisie you will need to file an application in the desired UPC local division court. The application cannot be a mere fishing exercise or suspicion of infringement, and so the application will need:

1. to clearly set out what measures are requested (e.g. an inspection of premises),
2. to indicate the exact location of that evidence with a good reason,
3. if the infringement action has not already started, to provide a concise description of the action that will be started,
4. if the application is requested ex parte, to provide reasons why it should be granted on that basis (for example, urgency, particular reasons for not hearing the defendant, or the danger that evidence might be destroyed or cease to be available), and
5. to provide the facts and “reasonably available” evidence relied upon.

If the court grants the order, it will appoint an expert to conduct the saisie. The expert will submit a report of their findings to the court. The court will disclose the report to the applicant, subject to request by the defendant for sequestration of the confidential information.

The applicant will be given 31 calendar days or 20 working days (whichever is longer) to file their infringement action from a deadline set by the court. If they do not do so, the order will be revoked and the evidence gathered will not be usable in proceedings.

UPC Court of Appeal explains the saisie mechanics

In Progress Maschinen v AWM and SCHNELL, Progress had filed an application in the UPC Local Division Milan for preserving evidence and for inspection against both the defendants, AWM and SCHNELL. This was among the first saisie applications and even the Local Division seemed unsure about how the evidence should be handled and the time limits that applied to the parties. The first instance decision in relation to the saisie application was appealed by Progress.

The UPC Court of Appeal (CoA) confirmed that the purpose of a saisie is not merely preservation of evidence but disclosure of that evidence to the applicant. However, that disclosure is not unconditional. It can be subject to the protection of confidential information. The court must hear from the defendant on the request for disclosure even if the defendant does not object to the saisie order itself.

Accordingly, the UPC CoA held that:

1. The Local Division was wrong to say that Progress had failed to make a request for disclosure. The request for disclosure was inherent in the saisie application.
2. The defendants were right to argue that the Local Division had to hear them and offer them the opportunity to make a confidentiality request before authorising the disclosure of the evidence to Progress.
3. The time period for filing the action on the merits “runs from the date on which Progress gains access to the evidence following the specific order on the request for disclosure or the date of the final order rejecting that request”. Therefore, the time period for bringing the action on the merits had not started to run. The infringement action that Progress had filed was therefore started on time and there were thus no grounds for revoking the saisie order.

The theory is fine. What does it mean in practice?

There is no discovery at the UPC. If you are a claimant you may need to secure evidence held by the defendant to prove your case. A UPC saisie is a powerful tool for this, either before or during an infringement action. There are some circumstances where it may also be of use in revocation actions. But it is an underused judicial tool and may be unfamiliar to those grounded in common law. Only about half a dozen applications for saises have been filed in the first year of the UPC.

If you want to apply for a saisie order at the UPC, our top tips are:

1. You need to have “reasonably available evidence” to support your application.
2. If you are requesting the order ex parte, explain why this is necessary.
3. Be proactive in requesting disclosure of the expert report if the court is slow in ordering this.
4. Be prepared to deal with a request from the defendant to revoke the order and for some or all of the evidence gathered to be subject to confidentiality restrictions.
5. Be clear on the deadline for when you must file the action on the merits to avoid the saisie order being revoked, which will result in the evidence being unavailable in proceedings.