2025 Week 29
UPC orders for preserving evidence (saisie orders) and preliminary injunctions are closely-related measures – typically brought by the patentee in advance of starting an infringement action. So it’s tempting to assume that the same general considerations should apply to each when a court of the UPC is considering whether to grant them. The UPC Court of Appeal (CoA) has taken the opportunity to explain very clearly why that’s not quite right and that materially different considerations apply to each.
One point about names. The catch-all term “provisional measures” is loosely used to encompass preliminary injunctions (PIs), orders to preserve evidence (saisies), orders for inspection and freezing orders. The UPC refers to PIs as a type of provision measure and saisies as a separate order, but there is some cross-talk between the different rules of the UPC, making the distinction blurry. So we will stick with the “provisional measures” catch-all term.
UPC Weekly 2025 w16 reviewed the UPC case law to date on saisies, including an interesting pair of orders from the UPC Local Division Paris in Tiru v. Valinea and Tiru v. Maguin (March 2025). On appeal, the CoA has upheld these orders and given its first substantive guidance on saisies. (A previous CoA decision in Progress Maschinen v. AWM and Schnell (July 2024) was more about the mechanics of use of the evidence gathered in a saisie, and was discussed in UPC Weekly 2024 w32.)
Provisional measures at the UPC – are they being used?
Just to stay grounded, it’s worth showing the (high) total number of infringement actions and separate Central Division revocation actions:
There are fewer provisional measures cases. By far the most used provisional measure is the preliminary injunction – it’s the biggest stick in the UPC provisional measures armoury, with 72 requests for PIs having been filed. We reviewed the legal framework to PIs here, including the grounds that the court needs to be satisfied on before ordering a PI. 18 saisie applications have been filed since the start of the UPC, so we can see that UPC users are still getting to grips with these.
Reasons to go ex parte
It’s pretty understandable that a patentee wouldn’t normally want to warn the defendant that a saisie order is incoming. However, R.192.3 RoP makes it clear that the applicant for the saisie must explain why the proceedings should be ex parte “in particular where any delay is likely to cause irreparable harm to the applicant or where there is a demonstrable risk of evidence being destroyed or otherwise ceasing to be available.” Additionally, the applicant is “under a duty to disclose any material fact known to it which might influence the Court in deciding whether to make an order without hearing the defendant.” According to R.194.2(a), the court takes the urgency of the action into account when deciding how to proceed.
First substantive appeal decisions on whether to grant saisie applications
In Maguin v. Tiru and Valinea v. Tiru, the CoA set out key guidance on how the merits of a saisie application are different to the merits of a PI application. These aren’t long decisions (9 pages) and are worth a read.
Tiru had been granted simultaneous saisie orders, carried out on the manufacturer (Maguin) and the operator (Valinea) of waste incineration furnaces who, they argued, infringed EP 3178578 B1. After an unsuccessful request for review of the saisie orders, Maguin and Valinea appealed, arguing that the first instance proceedings should have been inter partes because Tiru had not shown the necessary urgency, had not shown that there was a risk of destruction or unavailability of evidence, and had displayed a lack of candour by not bring prior art to the attention of the court.
On urgency and availability of the evidence, the CoA considered that what matters are the circumstances as assessed by the court. On the facts of these cases, the CoA decided that it was right that the saisie applications were urgent because of a short time window before it would be impossible to inspect the interior of the furnaces (and so the relevant evidence would be unavailable). Contrasting with a PI application, less relevant is the time taken by Tiru to prepare and file the saisie application. There is no requirement for the UPC to consider “unreasonable delay” as a reason for not granting a saisie.
With respect to the duty of candour, the CoA explained that is not necessary for the court to be satisfied that the patent is valid. This is starkly different to a PI application – for example the CoA’s first substantive encounter with a PI was to strike it down due to doubts over the validity of the patent in 10x v. Nanostring. The CoA did concede that a saisie application might be denied where the presumption of validity could clearly be called into question – such as based on EPO opposition proceedings. But in these cases, the CoA ruled that it should not be necessary for an ex parte saisie application to be accompanied by a disclosure of potentially relevant prior art (unless, perhaps, this is clearly killer prior art).
The CoA did not address whether the existence of a protective letter would have helped the defendants. A protective letter is useful in particular for when a party expects to be the subject of a PI. However, there is a reference to protective letters in the rules about saisies – that a protective letter on the file will be taken into account by the judge and the applicant can decide to withdraw the saisie application in view of the protective letter. Having said that, the Local Division Munich looked at the defendant’s protective letter in Nanoval v. ALD Vacuum and decided to grant a saisie ex parte anyway, on the basis that the content of the protective letter appeared to the court to be obstructive.
For completeness, of course there is also no requirement for the saisie application to persuade the court that the patent is infringed, to the same “probable” standard as would be needed for a PI application, because the purpose of the saisie application is to secure suitable evidence for showing this. As explained here, all that is required for a saisie is that there is “reasonably available evidence” of infringement – this is a low threshold.
