“There’s no discovery at the UPC” is something you may hear, and it’s true from a strict common law understanding. There is no general obligation to turn over evidence to the other side that may be material to the dispute at hand. But that’s not to say that the UPC is an evidence-free zone – far from it. It’s possible to seek evidence even before starting infringement proceedings using a saisie application. Saisies are aggressive evidence-gathering measures, but they are not the only game in town, as two recent UPC cases show.
What’s the procedure?
What we’re talking about here is the UPC’s Rule 190 RoP process, which elaborates the basic availability of an evidence production order set out in Art. 59(1) UPCA. R.190.1 RoP has very similar wording to Art.59(1) UPCA and the further paragraphs of the rule set out further details:
Rule 190 – Order to produce evidence
1. Where a party has presented reasonably available and plausible evidence in support of its claims and has, in substantiating those claims, specified evidence which lies in the control of the other party or a third party, the Court may on a reasoned request by the party specifying such evidence, order that other party or third party to produce such evidence. For the protection of confidential information the Court may order that the evidence be disclosed to certain named persons only and be subject to appropriate terms of non-disclosure.
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4. An order to produce evidence shall in particular specify:
(a) under which conditions, in what form and within what time period the evidence shall be produced;
(b) any sanction which may be imposed if the evidence is not produced according to the order.
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7. If a party fails to comply with an order to produce evidence, the Court shall take such failure into account when deciding on the issue in question.
CoA sets the scene
Polytechnik v. Dall (24 April 2026) is from the UPC Court of Appeal (CoA). It’s part of an appeal, with the defendant challenging an LD order for producing evidence under R.190 RoP in an infringement action. The CoA has not yet decided on the substance of the order but rather on whether the appeal should have suspensive effect so that, in the interim, the relevant evidence would not be handed over.
But the CoA took the opportunity to explain in general terms what the R.190 RoP is for, and the threshold faced by the party making a R.190 RoP application:
21. The specific recognition of a party’s right, under certain conditions, to request an order for the production of evidence – whether documentary or otherwise – and the corresponding power of the Court to issue such an order, is rooted in the acknowledgment of the information asymmetry that may arise in infringement proceedings to the detriment of the claimant. This occurs where evidentiary material necessary to prove infringement (or the resulting damages) is within the exclusive control of the opposing party or a third party. In such circumstances, a rigid application of the adversarial principle would unreasonably prejudice the patent holder’s right to enforce their title.
22. The balance between the patent holder’s interest in effective judicial protection and the general principle – established also in the interest of the defendant – that the claimant bears the burden of proving the facts alleged in support of its claim (Rule 171 RoP), is achieved by requiring the applicant to provide reasonably available evidence sufficient to support its claims and to specify, in substantiating those claims, the evidence controlled by the opposing party. The assessment of these conditions is ultimately deferred to the discretionary power of the Court.
In other words, the UPC recognises that the claimant may face a problem in enforcing their patent, because in many cases the full details of the alleged infringement will be in the control of the defendant. R.190 RoP allows the claimant to request specific information from the defendant to help to prove their case. However, fishing expeditions are not permitted. The claimant first has to present reasonably available and plausible evidence in support of their claims and must specify the evidence that it is seeking.
In the case at hand, the CoA decided that the appeal should not have suspensive effect, because if the LD order is ultimately overturned on appeal, the effect would simply be that the evidence was struck from the record and would remain protected under a confidentiality regime. So we wait to see whether the CoA actually upholds the evidence production order.
Defendants can do this too
Establishment Labs are claiming infringement of EP 3107487 B1 by a group of GC Aesthetics companies, the patent covering soft tissue implants. GC Aesthetics defended with a counterclaim for revocation and argued that the claims use unusual parameters to define the surface texture of the implant. GC Aesthetics therefore filed a R.190 RoP application to request a long list of documents and actual samples from the patentee, arguing that these were needed to help their invalidity arguments based on prior use.
The Brussels LD issued their order in GC Aesthetics v. Establishment Labs (14 April 2026). Overall, the LD granted the application for production of evidence, but the structure of the order is very interesting and nuanced. It can be contrasted with a much briefer order in Bostik v. Henkel (LD Paris 4 February 2026) in which the patentee succeeded in an evidence production order for further information on specific alleged infringing adhesives.
What GC Aesthetics really seemed to want were physical samples of a product called the Motiva SilkSurface implant, including samples manufactured before and after the priority date. Presumably this would enable the defendants to carry out the requirement measurements of surface texture within the definitions used in the claims. Additionally, GC Aesthetics requested sales figures for these products, marketing materials, third party test reports that had been referred to in corresponding US prosecution, technical specification and qualification documents, documents submitted for European regulatory approval and design history files. As a fallback position, GC Aesthetics invited the court to consider a narrower order at their discretion.
Establishment Labs resisted the requests, arguing that they were premature – they had not even filed their defence to the counterclaim for revocation at that stage. They also argued that the application was non-specific, unnecessary and disproportionate.
The LD built on the approach set out in Winnow v. Orbisk (LD The Hague 14 October 2024). In that earlier case, the patentee was requesting a broad range of information from the defendant in relation to the functionality of the alleged infringement. The judge considered that the overall request was too broad, but recognised that there was a class of documents specified that would be relevant to the points of infringement at issue. Therefore a relatively narrow order was granted for the production of documents describing two particular aspects of the operation of the alleged infringement. No specific sanction was set out for a failure to provide the evidence, other than a reference to R.190.7 RoP above, that the court would take the failure “into account”.
The court followed this stepwise, cumulative approach to the application, following the Winnow v. Orbisk order:
1. The requesting party must have presented evidence “reasonably available” in support of its claims;
2. The evidence to which access is requested must be “specified” and lie in control of the other party;
3. The other party’s confidential information must be protected;
4. (…) Any order to produce evidence must satisfy the requirements of proportionality, equity, and fairness.
The court started off by further elaborating condition 4 to include timing. Was it OK to request production of evidence at such an early stage in the proceedings when the defence to be filed by the claimant might make the evidence moot? In the circumstance of this case, the court decided that it was not too early, particularly as the claimant had filed comments on the R.190 RoP application and said that the assertions made by GC Aesthetics were not accepted.
Noting that Establishment Labs, in their defence to the counterclaim for revocation, could decide to admit various facts asserted by GC Aesthetics, in effect the LD constructed three orders, and Establishment Labs can choose which one they comply with:
Order (a): provide the samples of the product manufactured before the priority date and declare that these were in the public domain before the priority date. In this case, all of the other requested evidence is deemed disproportionate and need not be provided.
Order (b): provide the samples of the product manufactured before the priority date but fail to declare that these were in the public domain before the priority date. In this case, all of the other requested evidence, except for the post-priority product samples, must also be provided.
Order (c): if it is not possible to provide the samples of the product manufactured before the priority date, then witness statements to this effect are needed. Also, all of the other requested evidence, except for the post-priority product samples, must be provided.
Additionally, and in contrast to Winnow v. Orbisk, the court set penalty payments of €2000 per day for failure to comply with the order within 21 days.
Where do we stand?
The general explanation provided by the CoA and the targeted specificity of the Brussels LD order show the path ahead. Evidence production mechanisms are clearly available to both claimants and defendants at the UPC. It’s key to present a plausible allegation based on the evidence that is already available in the public domain, and in particular it’s important to be as specific as possible about the evidence sought from the other side.
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