8 February 2023
The inspection serves the purpose of verifying facts, in particular also preparation for patent litigation. Accordingly, the proprietor requests inspection if he cannot yet conclusively prove a patent infringement because, for example, he lacks information on a technical process which is relevant for the patent infringement. Via an inspection order, the proprietor gains access to premises or an object located therein.
A claim for an order for inspection and an order for the preservation may be distinguished as follows: The object of the inspection order is the mere inspection. Any further examination and documentation, and even more so any seizure, is only possible on the basis of an order for the preservation of evidence. On the other hand, if the object to which the order for the preservation of evidence relates is located in premises that are not accessible to the public, the mere order for the preservation of evidence is not sufficient. In this case the preservation of evidence claim is supplemented by an inspection claim.
The court orders an inspection according to Art. 60(3) sentence 1 UPCA only upon application. According to Art. 60(3) sentence 1 UPCA, the applicant must state and prove that the patent has been infringed or is about to be infringed. The further content of the request is determined in R. 192 RoP UPC: In particular, the application must contain information about the requested measure including the exact location where the evidence to be secured is known to be located or where it is reasonably believed to be located. In addition, the necessity of the inspection measure must be justified and the facts and evidence upon which the request is based must be presented to the court. An ex parte application must be specifically substantiated: Pursuant to Art. 60(5) UPCA in conjunction with R. 197.1 RoP UPC, the applicant must show that he is likely to suffer irreparable damage as a result of a delay or that there is a risk that the other party will destroy evidence.
According to Art. 60(3) UPCA, inspection may be conducted in "premises", i.e. a property and buildings thereon. However, R. 199.1 sentence 1 RoP UPC specifies: inspection is not limited to a "premises" per se, so that products, devices, methods or local situations in situ may also be subject to inspection.
These “premises” must be included in the application to become the subject of the order. Although the wording of R. 199.1 sentence 1 RoP UPC also covers publicly accessible objects, it is for the courts to decide whether access to these premises is restricted by Art. 60(3) UPCA. As the other party is not entitled to the same degree of protection in these cases, the requirements of Art. 60(3) sentence 1 UPCA might have to be reduced to the fact that there is a need for evidence.
"Other party" within the meaning of Art. 60(3)-(6) is the alleged (future) patent infringer, respectively the infringing defendant.
The legal position of third parties who are not directly infringing is unclear: Art. 60(8) UPCA provides that measures for the preservation of evidence may be revoked at the request of the defendant. Since there is no corresponding provision in connection with the inspection and its impact on the defendant is weaker than measures of preservation of evidence, an inspection could also be permitted against third parties - at least if, in accordance with Art. 60(3) UPCA, access to evidence also requires inspection of premises of third parties. However, if the third party possesses (potentially) infringing devices or is a participant in the act of infringement, Art. 60(3) UPCA would be applicable.
The other party is in any case to be heard - either before the inspection is ordered or - in case of an ex parte request - afterwards:
In principle, the other party must be heard before the order is issued - in writing or pursuant to R. 195 RoP UPC on the basis of an oral hearing.
However, the right to be heard is postponed if an ex parte order is issued: Pursuant to Art. 60(6) UPCA, the other party must be informed of the order without delay, but at the latest immediately after the execution of the measures. The other party then has the opportunity to request a review of the order by the court, in the context of which a decision is made as to whether the measures taken are to be modified, revoked or confirmed.
The order is based on a discretionary decision. The court must, pursuant to R. 194.2 RoP UPC, take into account in particular the urgency of the action, the reasons for an ex parte order and the probability that evidence may be destroyed or otherwise no longer available. No requirement for the issuance of the order is that the defendant has refused an inspection or that there are concrete indications that he will refuse to give his consent. Therefore the inspection order may be issued as an anticipatory order prior to infringement proceedings in accordance with Art. 60(3) sentence 1 UPCA.
The order is in principle immediately enforceable. The enforcement of the order is subject to the enforcement procedure and conditions of the Member State in which enforcement is sought. In a general rule, no further national orders are required in addition to the order issued by the UPC. However, if a court order is required for enforcement under national law, because otherwise the national enforcement body may not enforce the order (for example, in the case of an order for inspection at night time), it must be included in the order issued by the UPC. This is because the enforcement is governed by the law of the Member State in accordance with R. 354.1 sentence 2 RoP UPC.
The other party concerned is protected by different measures:
According to Art. 60(3) sentence 2 UPCA, the inspection shall be conducted by a person to be appointed by the UPC in accordance with the Rules of Procedure. Furthermore, the group of persons who have access to the information is restricted by the fact that the applicant himself must not be present at the inspection pursuant to Art. 60(4) UPCA. However, he may be represented by an independent professional practitioner who must be named in the court order. The standard for “independent professional practitioner” is based on national law. As a rule, this will be a judicial officer or technical expert.
For additional protection, the court may order secrecy measures: In general, Art. 58 UPCA allows to limit or exclude the collection of or access to evidence. This general principle is partially concretized in R. 199.1 sentence 2 RoP UPC. Accordingly, in an inspection order, the court may limit access to confidential information to certain named persons, whereby the information may only be disclosed under certain confidentiality obligations. In any case, this appears to be required in the case of an ex parte inspection, as such inspection represents a significant interference with the business operations of the other party and, due to the surprise effect of such measures, the other party cannot defend himself sufficiently promptly. Consequently, the other party’s confidentiality interests must particularly be respected and ensured.
The information obtained from the inspection may only be used for the main proceedings and, in principle, not for other proceedings, unless this is expressly permitted by the court (R. 196.2 RoP UPC).
An inspection is a powerful tool for the right holder to gather information and prepare a patent infringement action and usually comes as rather a surprise for the defendant. Therefore, both patent right owners and potential defendants should thoroughly prepare to be a party on both sides of the inspection proceedings.
Following this review of the procedural possibilities and peculiarities of the UPC inspection procedure, we will explain in our next article the differences to the national survey procedures as the UPC inspection is much stronger than some national laws and at the same time less flexible as in other national laws. This implies strategic options to be considered by both sides.
The Unified Patent Court (UPC)
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