What are provisional measures?
Provisional, or protective, measures are court orders which may be granted for the benefit of a patentee against an alleged infringer prior to the commencement of an infringement action. Provisional measures may be used, for example, to preserve evidence or protect a patentee from harm prior to proceedings.
Are provisional measures available at the UPC?
Yes. A variety of provisional measures are available at the UPC, including: preliminary injunctions; orders for seizure of products; orders for the preservation of evidence (saisie); orders for inspection; and freezing orders. Preliminary injunctions and orders for the seizure of products will be covered separately in our next update; for more information on saisie, inspection and freezing orders, read on.
What are orders for the preservation of evidence (saisie), and how are they obtained?
As the name suggests, saisie orders may be used to allow the seizure and preservation of evidence prior to an infringement action, subject to the preservation of confidential information. A.60(2) of the Agreement on a Unified Patent Court (UPCA) is focussed on orders for the preservation of evidence. Orders may include measures such as “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” (see A.60(2) UPCA).
To obtain an order for the preservation of evidence, a patentee must present the court with evidence supporting a claim that a patent is valid and has been infringed or is about to be infringed. It is not clear at this time what evidence may satisfy the court the patent is valid, however an indication that the validity of the patent has previously withstood challenge (for example, in EPO opposition proceedings) may be useful in this regard. The court will then make a determination based on the balance of harm to the parties on whether or not to make an order.
Where and on what legal basis is an order for the preservation of evidence executed?
The UPCA is currently in force in 17 European states. These 17 states constitute the territory covered by the UPC and orders made by the UPC (such as saisie orders) can be executed anywhere within this territory. However, the execution of the order itself will be performed in accordance with the national law of the state(s) in which the order is executed.
What about orders for inspection?
The UPC may make an order for the inspection of premises, to be conducted by a person appointed by the court. The patentee is not permitted to be present at the inspection, but may be represented by an independent professional practitioner. A.60(3) and (4) UPCA focus on orders for inspection. In order to obtain an order for inspection a patentee must present the court with evidence supporting a claim that a patent is valid and has been infringed or is about to be infringed; the requirements are similar to those for obtaining an order for the preservation of evidence as discussed above.
Is the potential infringer always heard in the provisional measures proceedings?
No. It is possible for preservation of evidence and inspection orders to be made following ex parte proceedings, that is, without the affected party (the potential infringer) being heard
Where ex parte proceedings are used, the UPC is expected to apply a high barrier for obtaining orders; requiring the patentee to demonstrate that any delay is likely to cause irreparable harm to the patentee, or that there is a demonstrable risk of evidence becoming unavailable (for example, being destroyed) in the event of a delay. The patentee is expected to also be required to explain why the affected party is not to be heard and disclose other relevant information, including information on any other pending proceedings regarding the patent, any previous unsuccessful attempts to obtain provisional measures, any prior correspondence between the patentee and alleged infringer, and so on.
What other restrictions apply to preservation of evidence and inspection orders?
For both types of order, where the order is made following ex parte proceedings, the affected parties are required to be notified no later than immediately after the order is executed. A review of the order may then take place upon request of the affected parties; the review may result in the confirmation, modification or revocation of the order
Additional restrictions apply to orders for the preservation of evidence. The patentee may be required to lodge a security prior to the execution of the order. The security is to be used to compensate the affected parties if the order is subsequently revoked or lapses or where subsequent proceedings do not find patent infringement. Further, the measures to preserve evidence may be revoked at the affected parties request if the patentee does not bring an infringement action within the longer of 31 calendar days and 20 working days.
And freezing orders?
Freezing orders may require an affected party not to remove from the jurisdiction of the court any assets located therein, or not to deal in any assets whether located within the jurisdiction of the court or not. Freezing orders are the focus of A.61 UPCA. The requirements for obtaining a freezing order are similar to those set out above for preservation of evidence and inspection orders, including the possibility to obtain a freezing order without the alleged infringer being heard (following ex parte proceedings).
I am concerned about how provisional measures may impact my business; is there anything I can do to reduce the risk?
For inter partes proceedings (in which both parties are given the opportunity to be heard), an alleged infringer can effectively prepare and present their own case, thereby reducing the risk of an order for provisional measures being made against them. Timescales are typically short in the UPC regime; if you become aware that proceedings may be imminent please get in touch with your usual HLK contact as soon as possible.
A less predictable risk in some respects are ex parte proceedings; here, an affected party may not even be aware that an order has been applied for against them until after it is granted. To reduce the risk of an order being granted following ex parte proceedings, it is possible to file a protective letter at the UPC. The purpose of a protective letter is to persuade the Court not to grant provisional measures against a party without first hearing that party. The pros and cons of protective letters are discussed in greater detail here.