In France, some 80% of patent infringement actions begin with a saisie-contrefaçon – an ex parte procedure where the patentee obtains an order permitting a huissier (a bailiff) to enter premises and seize evidence of infringement without warning to the defendant in what is often in effect a dawn raid. The UPC includes a saisie procedure, and on its face, therefore, one might think that most, or at least many, UPC actions will also start with a saisie. In this article we look at whether this will, in fact, be the case, or whether (at the other extreme) the saisie will be a novelty limited to the sorts of cases which, in the UK might be started with an Anton Piller application where there is an essentially dishonest defendant who is likely to destroy evidence unless it is seized without warning.
In considering this issue, it is first necessary to consider why the saisie is so prevalent in French patent proceedings. There are a number of factors. First, aside from showing standing and the existence of a patent in force, there are no substantive requirements to obtain the order: it is available as of right. There is no need to adduce any evidence of infringement, nor to show that the information cannot be obtained by another means.
One also has to consider how else in France a claimant can obtain evidence? The answer is only with the greatest of difficulty. Although there is a procedure which could be argued to be equivalent to UK disclosure, the order (an order to produce evidence) is rarely granted in France, and only when the patentee was unable to obtain the evidence during the saisie, and in consequence is usually refused when the patentee has failed to try to obtain the evidence during the saisie. There is also a right of information (introduced following the implementation of the Enforcement Directive (48/2004)), but there is controversy as to whether it can be used during an action on the merits or merely after a finding of infringement and in relation to the damages inquiry phase. Hence, in France the saisie is far from simply being a measure to preserve evidence which is the sole purpose of the Anton Piller order: rather it is the primary means of obtaining evidence.
Given all these factors, it is hardly surprising that the saisie is so popular.
When one examines the position in the UPC1, however, one sees a very different picture.
The first contrast is with the content of the application (rule 192). This includes providing:
A clear indication of the measures requested and the exact location of the evidence to be preserved
The reasons why prompt measures are needed (urgency)
Facts and evidence in support of the application
If the order is sought before main proceedings are commenced, a concise description of the action which will be started and facts and evidence which will be relied on
If the order is requested ex-parte, justification for not hearing the defendant, and disclosure of any material fact known which might influence the Court
It is immediately apparent how very much more burdensome than the French procedure the UPC procedure will be: indeed, it is much more akin to the requirements in England for obtaining an Anton Piller order at least in as far as it is sought ex parte.
When considering an ex parte application for a saisie, there is also another matter to consider. In France there is no “protective letter” system. This is a mainly German concept, but it has been incorporated into the UPC in Rule 207. It gives potential defendants the opportunity to file a letter with the Court which requests that it be given notice of any applications for provisional measures. Under rule 209.2(d), the Court “shall in particular consider summoning parties to an oral hearing if a relevant Protective letter has been filed by the defendant”. Whilst this does not guarantee that a saisie order will not be made on an ex parte basis, it must surely considerable lessen the chances.
Of course, a saisie may still be ordered on an inter partes basis. This may instinctively seem to be a somewhat pointless exercise if the purpose is to catch the defendant by surprise. However, as in France, a UPC saisie is not simply a means of preserving evidence: it is one of the means of obtaining it it. In contrast to French procedures, the UPC has many other means of obtaining evidence, however. Rule 190 provides for the production of evidence; and rule 199 permits the Court to order inspection. Fact and expert evidence and cross-examination may also be expected to be more prevalent than in French proceedings. Hence, there is the possibility of English style disclosure and inspection of processes and a more Anglo-Saxon approach to written and oral evidence. However, the rule 190 power is specifically limited to during the pendency of proceedings, leaving only the saisie or the application for inspection as the way to obtain information pre-action.
When one looks at the requirements of rule 13 (content of a statement of claim) they are onerous. It is envisaged that a claimant lays out its case very fully at the outset. Hence, whilst this can be supplemented during the remainder of the written phase and during the interim phase, the requirement to plead a case in some detail is one factor pointing to the use of inter partes saisies (or the threat of them) to obtain evidence pre-action. This will be especially the case when there is a process patent and where the method of manufacture is not capable of deduction from the resulting product.
What then can one conclude about the use of saisies?
First, they will be useful ex parte tools in those cases where there is a dishonest defendant and where in equivalent circumstances a claimant might obtain an Anton Piller order. These cases will be rare, however.
Second, they will rarely be granted ex parte unless there is dishonesty. The fact that they are routinely granted in France is of no relevance because there they are available as of right on that basis. The UPC system is very different.
Third, the UPC procedures are such that there are other means of adducing evidence meaning that inter partes saisies will not be essential.
However, (fourthly) together with the right of inspection, the inter partes saisie will be a useful tool in the armoury of a patentee, most especially where the infringement is of a process / method patent. The availability of the saisies, moreover, will be a considerable lever to force potential defendants to agree to disclosure of details which they may otherwise refuse to disclose. Certainly one can envisage patentees threatening these remedies if a defendant will not agree a voluntary inspection and/or delivery up of samples.
In conclusion, therefore, it is difficult to see why patentees will routinely want to go through the onerous process of seeking a UPC saisie, when there are other alternatives available to achieve the same aim of obtaining evidence. However, in many process patent cases in particular it will be a useful lever to apply to defendants pre-action to obtain evidence, and will be one of a number of procedural tools capable of “keeping a defendant honest”.
Ultimately, the use of inter partes saisies pre-action may well depend upon the Court’s approach to permitting a claimant to expand upon its case during the interim phase by other procedural means. If this is generally permitted, the saisie may fall out of use. If however, the Court takes a strict view of the requirements of rule 13 to set out a case in great detail at the outset, then they may be almost as popular as in France. Further as with so many aspects of the UPC, variations in practices in local divisions may cause the use of this procedure similarly to vary, and provides yet another reason why procedural appeals in the early years of the UPC will be essential to standardise practice.
1 Art 60 UPC and rules 192-198 (15th draft rules)