The "Order to Preserve Evidence” at the UPC: Leveraging Belgian Saisie Expertise

With the issuance of the first "order to preserve evidence" by the Brussels Local Division of the Unified Patent Court (UPC), it is an opportune moment to highlight the extensive experience that Belgian judges, lawyers, and patent attorneys bring to this procedure. The "saisie contrefaçon", also known as a “descriptive seizure” or “saisie” herein, is a well-established practice in Belgium's national courts, and its introduction into the UPC - where it is known as an “order to preserve evidence” (also known as an “order” herein) - opens up a new avenue for practitioners in countries without a national equivalent procedure, such as Germany, a heavyweight in patent litigation.

The national saisie procedure empowers patent holders (and other IP rights holders) to gather and safeguard evidence of potential infringements of their patents. Often, the presence of a prima facie valid patent and an objective indication of infringement are sufficient to secure approval of the measure. Subsequently, the court appoints an expert and delineates the specifics of the saisie. Collaborating with a bailiff, the expert can then conduct the saisie at the premises of the alleged infringer. Following the saisie, the seizing party should initiate a proceedings on the merits in order to be able to maintain the evidence obtained.

As mentioned above, the Brussels Local Division of the UPC recently issued an order to preserve evidence (link here) concerning a potential infringement of European Patent EP 2 331 036 B1 valid in Belgium, the Netherlands, Luxembourg, Germany, and France. The Standing Judge of the Brussels Local Division ruled in favor of the request. The alleged infringer was a Spanish company scheduled to display, advertise, and offer the allegedly infringing product during a two-day symposium in Belgium. Given that the evidence would disappear after the symposium, the Judge not only approved the order but also allowed the confiscation of products and promotional materials presented at the event. This case exemplifies the expediency of this procedure as the request was filed just two days before the symposium, with the order issued a mere day later.

The order to preserve evidence procedures outlined in Article 60 of the Unified Patent Court Agreement (UPCA) and Rule 192 of the Rules of Procedure (RoP) align closely with equivalent procedures before the Belgian National Court. Compared with the French saisie, however, there are differences. Notably, it is the court (UPC or BE National Court), not the seizing party, that oversees the expert's report. Furthermore, UPC or BE National Court allows the seizure of goods during the saisie/order, a distinction from French procedure. Additionally, the practice of filing protective letters as a precautionary measure to avoid becoming the subject of a saisie is firmly established in Belgium and is a feature of UPC, whereas this not the case in France .

The RoP of the UPC underscore the duty to disclose any relevant information when seeking an order to preserve evidence ex parte. This duty is also inherent in Belgian proceedings. A recent judgment from the Belgian highest court (Hof van Cassatie) stipulated that a saisie request cannot be resubmitted with additional evidence that was reasonably available during the initial attempt. Rules of procedure of the UPC similarly have a duty to disclose, and Belgian experience may be invaluable when presenting a comprehensive case while requesting an order before the UPC.

In issuing and executing a saisie or order it is crucial to safeguard trade secrets and to prevent the unlawful acquisition of sensitive information and secret know-how. The issuing judge will already take these concerns into account and can incorporate protective measures into the order if necessary. The appointed expert also plays a role in this aspect, with the ability to report back to the court if sensitive information is encountered. Once again, having saisie expertise for the UPC order may be beneficial.

In summary, not every contracting state that is party to the UPC has a saisie procedure available at its national level, meaning there may be a lack of European expertise when it comes to requesting an order to preserve evidence in the unchartered UPC waters. Belgian attorneys and judges are well-positioned to apply lessons learned during their national saisie proceedings to the UPC framework which is closely aligned with the Belgian provisions. Knowledge of pit-falls can be especially useful, for instance, in understanding that infringement proceedings in the UPC are also designed to be front-loaded. On a final note: while an order to preserve evidence may seem a contentious act towards the alleged infringer, it can actually pave the way for a resolution, as both parties have access to the preserved evidence to assess their respective positions. In other words, it can be an impetus for parties to settle the dispute early, ultimately saving time and costs.

At De Clercq & Partners, we have experience in representing the seizing party, the seized party, or serving as the appointed expert. Many of our attorneys are qualified to act in both Belgian proceedings and Unified Patent Court (UPC) proceedings, enabling them to provide comprehensive advice on matters related to orders to preserve evidence or saisie contrefaçon. For more information, please don't hesitate to contact us at info@dcp-ip.com.