As a court-appointed expert for the Unified Patent Court (UPC), I had the unique opportunity to observe the Court’s operations firsthand in connection with a request to preserve evidence (the seizure of counterfeit goods). In December 2024, I was appointed by the French local division of the UPC to conduct the second seizure in France in the context of an infringement dispute between two French companies. Although, as a French patent attorney, I am familiar with the “seizure of counterfeit goods” procedure, it was particularly interesting to see how the UPC adapted this typically French procedure to secure evidence within its own system.
This article reflects on that experience and aims to outline the legal basis and procedural framework for evidence preservation measures before the UPC. It includes a concrete case study that highlights the challenges and lessons learned from this UPC enforcement mechanism.
Legal basis and conditions for evidence preservation
Pursuant to Article 60 of the UPC Agreement, upon the request of a petitioner who has presented reasonably available evidence supporting the claim that the patent has been infringed or is about to be infringed, the Court may order provisional measures to preserve relevant evidence relating to the alleged infringement. Such measures may include a detailed description, with or without sample collection, or the physical seizure of the infringing products. Such an order may be issued “even before the filing of a suit on the merits,” that is, before or after the applicant has filed an infringement suit before the UPC.
Unlike under French law, Rule 194-1 of the UPC Rules of procedure grants the Court the discretion to notify the defendant of the application and invite them to file an opposition. However, in cases where “any delay would be likely to cause irreparable harm to the patent holder, or where there is a demonstrated risk of destruction of evidence,” the Court may issue the order ex parte (i.e., without the defendant’s presence). It should be noted that, in most of the orders for the preservation of evidence issued by the UPC during its first years of operation, the orders were obtained without a hearing of the defendant.
This must be interpreted in light of Article 62.2 of the UPC Agreement, which requires the Court to weigh the interests of the parties, that is, to apply the criterion of proportionality of the measures by balancing the interests of both parties. This explains why the applicant must provide reasonable evidence of infringement, why orders are granted ex parte (i.e., without the respondent being notified in advance) only in cases of urgency or risk of destruction of evidence, and why such measures may be subject to the applicant posting a bond (in approximately half of the cases to date). Furthermore, as clearly illustrated in the case study below, the measures must be implemented subject to the protection of trade secrets (Article 60.1 of the UPC Agreement: “subject to the protection of confidential information”).
Procedural framework and enforcement
Based on the applicant’s written request and supporting evidence, if the Court finds that the conditions are met, it issues an order preserving evidence. In this order, the Court appoints a person to carry out the measure; this person must be a professional whose expertise, independence, and impartiality are guaranteed. In accordance with Rule 196 of the UPC Rules of Procedure and national law, this person may be a judicial officer or assisted by a judicial officer. The applicant may not be present during the execution of the measures but may be represented by an independent professional, who must not be the applicant’s regular counsel.
The designated person must carry out the measures within the scope and time limits specified in the order and submit a written report to the Court within the time limit indicated in said order (Rule 196.5 of the UPC Rules of Procedure).
Article 60(8) of the JUB Agreement requires the applicant to file a claim on the merits within 31 calendar days or 20 business days (whichever is longer); otherwise, the effects of the evidence preservation measures will be revoked or will cease to have effect. It is important to note that, unlike under French law, the starting point for this period is not the date of the seizure, but, according to the UBI Court of Appeal, the date on which the evidence was disclosed to the applicant, or the date on which the Court issued a final decision denying the applicant access to the evidence.
Case study: Second seizure request before the French local division of the UPC in 2025
The order for the preservation of evidence
To respect the confidentiality of the investigation, this case study is based exclusively on court orders and decisions publicly available on the JUB website.
In the case to which I was assigned, the applicant filed two parallel applications for preservation of evidence in December 2024 concerning a waste incineration furnace: one to inspect the site where the furnace was being installed, and the other to inspect the furnace manufacturer’s factory. The petitioner provided evidence of a potential infringement of his European patent, based on an online post and a video published by the defendant. To justify an ex parte order, the petitioner cited urgency, noting that the incinerator was scheduled to begin operations in early 2025, after which any inspection would no longer be feasible.
In its requests, the petitioner asked the Court to order a detailed description of the furnace, the physical seizure of technical, promotional, and accounting documents, and the preservation, by printing or copying, of digital media related to the furnace.
In its order, and in order to protect trade secrets, the Court notably refused to order the physical seizure of accounting documents, as the infringement had not yet been established.
This decision confirms that the Court clearly took into account the measure’s proportionality. Similarly, the Court required the plaintiff to post a bond to ensure compensation for any damages caused to the defendant in the event that the action on the merits were to fail. In accordance with French law, in my capacity as a French court-appointed expert, I was designated in the Court’s order to carry out the measures at the oven manufacturer’s factory, in conjunction with an independent representative of the applicant (who is not the applicant’s usual counsel) and a judicial officer (formerly a bailiff) with territorial jurisdiction. Since I was required to retrieve digital media, the Court also granted me the authority to appoint an IT expert. Unlike in French proceedings, where the judicial officer oversees the seizure measures, here the judicial officer is appointed solely to serve the order and to draw up a report on the proceedings; the preservation of evidence must be carried out by me, as the judicial expert. This can make a major difference in identifying relevant technical evidence.
Furthermore, to preserve confidentiality, the Court ruled that the seized documents and my report would be accessible only to a “confidentiality circle” comprising the parties’ representatives solely.
The defendant appeals the order for the preservation of evidence
Following the execution of the measures on January 14, 2025, the defendant filed a motion on February 12, 2025, to have the seizure measures lifted, based on the absence of urgency, the absence of a risk of evidence destruction, and the fact that the petitioner had allegedly deliberately concealed information likely to impact the issuance of the order.
The Court, unconvinced by the defendant’s arguments, denied this motion on March 24, 2025. The defendant appealed this denial on the same grounds, and the appeal was denied on July 15, 2025. We are still awaiting the hearing and the decision on the merits in this infringement case.
Lessons learned and practical challenges
This case illustrates the Court’s practical application of this new interpretation of the French “seizure for infringement,” namely, the measure to preserve evidence before the UPC.
For the applicant, this example shows that such a measure should be considered only in cases of strong suspicion of infringement and when there is no other way to obtain evidence, as it is clearly a more costly procedure than the original French seizure-for-infringement. The applicant must provide clear evidence justifying the suspicion of infringement, post a bond, be prepared to pay the costs of the expert, the bailiff, and the representative to carry out the measures, and be ready to face a motion to set aside filed by the defendant. Furthermore, obtaining an ex parte order—which is generally vital for this type of request—is not automatic and requires the applicant to make a compelling case regarding the urgency or the risk of evidence destruction.
For the defendant, it is worth noting, in light of this case, that the Court clearly applies the proportionality test to the measure and takes into account the protection of trade secrets. Nevertheless, although the ex parte order should theoretically remain an exception, it appears, in light of this case and the cases from the UPC’s first year of operation, that it is becoming the norm. Thus, if you or one of your clients believes there is a risk of being subject to evidence preservation measures (for example, after receiving a formal notice), you should consider filing a “letter of protection” (Rule 207 of the UPC Rules of Procedure).
Such letters would be taken into consideration by the Court before issuing an order for the preservation of evidence and could prompt the Court to choose to hear the defendant or to dismiss the application rather than issue an ex parte order.
Conclusion
The UPC’s evidence preservation mechanism, although inspired by the French seizure (saisie-contrefaçon), operates according to a distinct legal philosophy centered on proportionality, fairness, and consideration of trade secrets. Unlike the French system, which favors patent holders with a minimal standard of proof, the UPC requires applicants to demonstrate a prima facie case of infringement and, to obtain ex parte measures, the urgency or risk of evidence destruction. This reflects a European-wide compromise, less aggressive than France’s but more structured and balanced in terms of rights. It remains to be seen whether its use will remain concentrated in jurisdictions with an established tradition of seizure (such as France or Italy) or spread across Europe, as suggested by emerging case law.
Edern TRANVOUEZ, PhD
Intellectual property attorney, European patent attorney, and Representative before the UPC
