In some patent infringement cases, relevant evidence lies in the control of the alleged infringer or a third party. It may be that the patent holder cannot get access to the evidence or that the evidence may be conveniently manipulated before it is disclosed. In these kind of situations, the patent holder can potentially rely on a court to order measures for preserving evidence, which may include compulsorily entering premises, inspecting the allegedly infringing goods or process, making detailed description or even physical seizure of relevant objects or documents. To achieve a surprise effect, the court order should usually be issued ex parte.
In Europe, notwithstanding the harmonization effort of the IPR Enforcement Directive 2004/48/EU, the law and practice concerning measures for preserving evidence still vary between jurisdictions. Notably, different requirements are set for ordering such measures; this article will highlight the differences between three current major European patent jurisdictions – the UK, Germany, France – and the upcoming Unified Patent Court (UPC) system, and discuss some of their implications on patent litigations in Europe.
A so called “search order” is the British instrument for preserving evidence. The British law sets an extremely high threshold for granting a search order: an applicant must show, among others,
- an extremely strong prima facie case on the patent infringement; and
- a real possibility that evidence will be destroyed without an ex parte order. (e.g., the reputation of the searched party should be taken into account)
In comparison, although the applicant of a German “inspection order” must also show prima facie evidence of patent infringement and the risk of evidence being manipulated, the required degree of probability is nevertheless much lower:
- a sufficient likelihood of patent infringement is required;
- as to the risk of evidence being manipulated, it is already presumed to exist, where the manipulation is technically possible.
- The German law sets further a requirement of necessity, in other words, the impossibility of obtaining evidence by another reasonable means.
In sharp contrast to the situation in the UK and Germany, the threshold for granting a French “Saisie-contrefaçon” is so low, that none of the aforementioned substantial requirements are necessary. Basically, all an applicant needs to show is a patent or a patent application, and some indications identifying the alleged infringement.
According to the Agreement on a Unified Patent Court (UPCA) and the 18th draft of the Rules of Procedure, the applicant of an UPC’s “order to preserve evidence and inspect premises” must show
- reasonably available prima facie evidence of patent infringement.
- To justify an ex parte order, urgency or the probability of evidence being destroyed will in particular be required.
In this context, one would not be surprised to see that the French Saisie-contrefaçon has become a popular instrument for litigants all across Europe. Many of them have brought an action in France almost only to benefit, for foreign parallel proceedings, from the evidence that could be obtained through a Saisie-contrefaçon. This usually requires the litigant to own the identical patent in both France and the foreign jurisdiction, as often is the case in regard to European patents.
Here, one interesting question emerges: will litigants before the future UPC, considering the relatively higher threshold for granting an UPC’s order to preserve evidence and inspect premises, also be able to strategically turn to the more accessible French Saisie-contrefaçon? It seems that the current strategy of initiating parallel infringement proceedings based on an identical European patent will not be appropriate anymore under the governance of the UPC, because infringement proceedings will be within the UPC’s exclusive competence. However, some French practitioners think that the French law doesn’t prevent a Saisie-contrefaçon from being carried out directly for infringement proceedings before the UPC; and the texts of the UPC don’t exclude its use as well. As to the latter point, their reasoning presumes that Art. 32 UPCA on the UPC’s exclusive competence doesn’t include the measures for preserving evidence.
However, the text of UPCA doesn’t provide a clear-cut answer. According to Art. 32 UPCA, the UPC shall have exclusive competence in respect of “actions for provisional and protective measures and injunction”, which seems to refer to the “provisional and protective measures” provided by Art. 62 UPCA, which is solely about preliminary injunction. Notwithstanding, Art. 60 (1) UPCA also characterizes measures to preserve evidence as “provisional measures”. Are measures to preserve evidence “provisional measures” within the meaning of the “provisional and protective measures” in Art. 32 UPCA? If yes, then the UPC should have exclusive competence in respect of them, and the use of French Saisie-contrefaçon must therefore be excluded. This question needs to be answered with clarity, and the answer will have a significant impact on the future patent litigations in Europe.