Obtaining evidence of infringement: preservation and seizure

Out of harmony in Europe

If a defendant is suspected of infringing a patent, it is of course crucial to be able to prove this in order to obtain relief.  However, the measures available to obtain evidence have traditionally varied from jurisdiction to jurisdiction in Europe. In 2004, in order to try to harmonise these, the EU Directive 2004/48/EU on the Enforcement of Intellectual Property Rights Act ("the Enforcement Directive") came into force.  According to the recitals on the Enforcement Directive, its objective was to "approximate legislative systems so as to ensure a high, equivalent and homogeneous level of protection in the internal market", i.e. across the EU.  However, despite the harmonising aim of the Directive, there remain significant disparities in evidence gathering procedures in the key patent jurisdictions in the European Union.  Now, with the signing of the Agreement on a Unified Patent Court ("UPC") on 19 February 2013 and (at the time of writing) a 15th draft of the Rules of Procedure ("Draft Rules")  available, there is the prospect of new approaches to obtaining evidence applicable across all the UPC contracting states. 

This is the second of two articles focusing on the measures to produce and preserve evidence in three major patent jurisdictions – Germany, France and England & Wales – and compares them to their counterparts in the UPC Agreement and the Draft Rules.

Measures for preserving evidence1

England & Wales

Book pagesIn English patent litigation, the procedure for obtaining a 'Search Order' is very rarely invoked and generally considered draconian.  To obtain such an order, the patentee would have to show not only that it has a strong case, but also that there are good reasons for believing that the defendant is liable to destroy evidence.  The English courts may be willing to assume a likelihood of destruction of evidence when the defendant is clearly a counterfeiter, but in other cases they will generally assume that any available evidence will be preserved and produced in due course in the proceedings.  This assumption is based on the fact that destruction of documents when litigation has been started, or is even contemplated, is regarded as a serious matter in the English courts and could be a contempt of court. 


By contrast, in France, there is greater reliance for the obtaining of evidence on the investigative infringement seizure – “saisie-contrefaçon2. Only patent ownership (or the justification that the claimant is duly entitled to introduce the infringement action), and possibly preliminary evidence satisfying a relatively low threshold, must be shown to the Presiding Judge of the Tribunal de Grande Instance of Paris to support the ex-parte petition for a saisie. However, the patentee must also act in good faith and should not, for example, hide any proceedings likely to challenge the validity of its title3. If a saisie is granted, a bailiff is appointed to carry out either the seizure of samples of allegedly infringing products, together with a detailed description, or the seizure of all allegedly infringing products. Devices and tools for making or distributing infringing product may also be seized, together with accounting documents. The patentee may appoint an expert of his choice, provided that the latter one is independent from the patentee, to accompany the bailiff. Finally, a saisie always needs to be validated by the introduction of the infringement action on the merits before the Tribunal de Grande Instance within a set period of time4.


German courts have developed a two stage preliminary procedure to deal with inspection claims5: in the first step, the relevant evidence is inspected or seized in the defendant’s premises based on an ex parte order and reviewed by a court appointed expert. This order is usually granted, if the plaintiff can show a reasonable likelihood of infringement (“more likely than not”) and if proof is not otherwise available. Specific proof that evidence could be destroyed or removed is not required. The court appointed expert will then provide an opinion on infringement to the court based on the obtained evidence. In the second stage, the defendant is invited to comment on the expert’s conclusions and the court will decide after an oral hearing whether the evidence is to be disclosed to the plaintiff. As a rule of thumb, evidence will be disclosed if the court appointed expert concludes that the patent is infringed.


DocumentThe UPC adopts the first part of Article 7 of the Enforcement Directive regarding orders to preserve evidence6 and the Draft Rules relating to this specifically use the term "Saisie"7.  These Rules specifically envisage that a saisie may be ordered without hearing the defendant in circumstances where delay is likely to cause irreparable harm or there is a demonstrable risk of evidence being destroyed or otherwise ceasing to be available.  Under the Draft Rules, the applicant also has an express 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; a duty resembling that in the English court. The UPC Agreement also specifically provides for the inspection of premises8. This inspection must be conducted by a person appointed by the court who may be accompanied on behalf of the patentee by an independent professional practitioner.

The emphasis on measures for preserving evidence in the UPC Agreement and Draft Rules, and even use of the word "saisie" suggests that a system more closely resembling that of France is envisaged, rather than England & Wales.  However, because the UPC expressly requires "reasonably available evidence" to support the claim that a patent has been infringed or is about to be infringed, the evidence required to obtain a saisie in the UPC may be somewhat higher than is currently the case in France, although in practice a patentee will preferably support his petition with all accessible evidence of the infringement.

This article is based on one first published in the October edition of Intellectual Property Magazine.

If you have any questions on this article or would like to propose a subject to be addressed by Synapse please contact us.

1See Enforcement Directive Article 7; UPC Agreement Article 60; Draft Rules 192 to 198

2Article L.615-5, French Intellectual Property Code

3Order of the Tribunal de Grande Instance of March 17, 2010

4Article R. 615-3, French Intellectual Property Code

5Section 140c German Patent Act

6Articles 60(1) and (2), UPC Agreement

7Draft Rules 192 to 198

8Articles 60(3) and 60(4), UPC Agreement


Dietrich Kamlah

Dietrich is a partner in the Patents group based in our Munich office.

Paul England

Paul is a senior associate and professional support lawyer in the Patents group based in our London office.