UPC decision: Order to produce evidence

Rule 192 of the Rules of Procedure of the Unified Patent Court: During the International Textile Fair ITMA, which took place from June 8 to June 14, 2023, in Rho, Italy, the patent proprietor and applicant discovered that a competitor at the fair presented two machines that infringed a European Patent; this was certified by the patent proprietor with a patent attorney's expert opinion. 

A request was made for the court to preserve all technical and commercial documents found at the competitor's trade fair booth. Due to the urgency of the proceedings, the case was initially assigned to a standing judge, who then referred the case to the local division in Milan, which in turn assigned the application to a single judge (Rule 194.2 Rules of Procedure). The decision acknowledges the court's competence and states that the patent proprietor not only provided sufficient evidence to make a credible case for patent infringement but also demonstrated that there were no objections raised against the patent. Therefore, the order to produce evidence was granted after a proportionality assessment, without hearing the defendant. 

The execution of the preservation of evidence was entrusted to a patent attorney registered as an expert with the local court in Milan, with the support of the competent court bailiff (Rule 196.4 of the Rules of Procedure). The patent proprietor's legal and patent attorney was allowed to participate in the evidence preservation, while other representatives, employees, or staff of the applicant were expressly prohibited from participating. In accordance with Article 58 of the Agreement on a Unified Patent Court (UPCA) and Rule 196.4 Rules of Procedure, it was ordered that the acquired documents be accessible only to two legal representatives of the applicant and one technical expert until a new order of the court. Furthermore, according to Rule 196.2 Rules of Procedure, the acquired evidence may only be used in the future main proceedings (UPC, June 13, 2023, CFI 127/2023).