Navigating the UPC’s evidence minefield: when confidentiality issues clash with procedural deadlines

Background

Patent holders navigating the Unified Patent Court (UPC) system have a powerful tool: seeking measures to preserve evidence when they suspect that their rights might be infringed. These measures, stemming from Article 7 of the EU enforcement directive¹, allow rights holders to gather crucial evidence before committing to a full infringement lawsuit. Think of them as the UPC’s version of established national procedures like the French saisie-contrefaçon, the Italian descrizione, or the Dutch bewijsbeslag.

However, this power comes with significant strings attached. Inspecting the premises of an alleged infringer often raises confidentiality issues, potentially exposing sensitive business information. Furthermore, obtaining these measures triggers a ticking clock; the patent holder must launch a full infringement action within a strict deadline. But what happens if confidentiality issues delay access to the very evidence needed to decide whether to sue?

This procedural tightrope walk was the focus of a landmark UPC Court of Appeal (CoA) order dated July 23, 2024, Progress Maschinen & Automation (“Progress”) v AWM and Schnell.

Whilst this ruling was aimed at clarifying the UPC’s stance, the dust hasn’t quite settled yet.

The UPC rulebook: gaps and guesses?

Article 20 UPCA provides that “[t]he Court shall apply Union law in its entirety and shall respect its primacy”. Article 58 UPCA, echoing Article 9 of the EU trade secret directive², provides that:

“To protect the trade secrets, personal data or other confidential information of a party to the proceedings or of a third party, or to prevent an abuse of evidence, the Court may order that the collection and use of evidence in proceedings before it be restricted or prohibited or that access to such evidence be restricted to specific persons.”

This is vital, particularly when the order is granted ex parte, but in practice the Rules of Procedure (RoP) do not provide anything more substantive³.

Critically, the UPC’s legal instruments also do not specify if delays caused by confidentiality issues should pause the countdown for the applicant to file their main infringement case. Rule 198.1 RoP simply dictates a deadline (31 calendar days or 20 working days, whichever is longer) starting from a date set in the order.

And unlike French law, which clearly starts the clock from the saisie-contrefaçon execution date, RoP 198.1 makes a vague reference to a “date specified in the Court’s order with due account to the date where the Report […] shall be presented”. This leaves room for potentially crippling ambiguity.

It took the CoA’s intervention in the Progress case to begin untangling this knot.

The Progress v AWM and Schnell procedural maze

The origins of the case

In September 2023, Progress secured two ex parte orders for preserving evidence from the Milan LD against AWM and Schnell, suspecting infringement of its patent EP 2 726 230.

Crucially, the LD blocked Progress’ access to any gathered information and documents, pending a specific further order. In the meantime, the defendants needed to request a review of the order post-execution (within 30 days under Rule 197.3 RoP) to address inter alia any confidentiality interests. However, should AWM and Schnell omit to file such a request, the LD suggested that this would mean tacit approval for full disclosure to Progress (pending nonetheless the specific further order granting access).

Finally, the LD linked the deadline for Progress to bring action on the merits with the defendant’s option to request a review. Progress’ countdown clock would start after the 30-day period had elapsed without the defendants requesting a review or after a final decision on the request for review had been issued.

The orders were executed in October 2023 and the experts lodged their reports in sealed envelopes with the Milan LD on the following day. Then there was complete silence for four months. On February 16, 2024, Progress (still blind to the evidence) requested access to it and later sought to amend the orders due to the delay in accessing the experts’ reports. Progress argued that it was essential for them to see the reports before they could decide whether to proceed with the main infringement action against AWM and Schnell.

Ruling on Progress’ requests on April 8, 2024, the Milan LD revoked the measures for preserving evidence. AWM and Schnell hadn’t requested a review by the deadline of November 16, 2023. Therefore, Progress’ 31/20-day deadline to sue on the merits had expired on December 18, 2023, making access to the reports moot.

The CoA’s decision: common sense prevails?

Progress appealed and the CoA delivered a crucial corrective on July 23, 2024, overturning the Milan LD’s decision.

Confidentiality vs. review: the CoA slammed the LD’s logic as inconsistent with the purpose of measures for preserving evidence and with the protection of confidential information. Applying for an order to preserve evidence inherently implies requesting access to that evidence and does not require a further request to this end—it’s the whole point of these measures!

Such disclosure is, however, not unconditional; the defendant must have a chance to be heard before the applicant sees sensitive information. Only then can the court decide whether and to what extent to disclose the evidence to the applicant.

“The Court must give the other party access to the evidence and must provide that party with the opportunity to request the Court to keep certain information confidential and to provide reasons for such confidentiality.”

Importantly, this opportunity to request confidentiality is distinct from the request for review under Rule 197.3 RoP. The latter, which is only available when the order is granted ex parte, only addresses the order’s validity and why it should be amended or revoked. Failing to request a review absolutely does not equate to waiving confidentiality rights.

Deadline debacle: The CoA stressed that the deadline to bring an action on the merits must align with the measure’s purpose: using the gathered evidence. Acknowledging the RoP’s silence on this issue, the CoA urged lower courts to state explicitly in their orders that the deadline starts only:

“(…) after the written expert Report has been disclosed to the Applicant or the Court has decided by a final decision not to give access to the Report”.

Tellingly, this wording mirrors “non-binding Guidance” published on the UPC website, intended to serve as a practical aid for judges to draft orders—but perhaps also a tacit admission of the RoP’s shortcomings?

Takeaways: clarity gained, questions remain

This case illustrates the challenges faced by the UPC in its early years of operation as it seeks to refine and harmonize its procedural rules and clarifying ambiguities that arise in practice.

The Progress ruling brings welcome clarity; however, it doesn’t solve everything. Key ambiguities persist. For instance, it remains unclear whether the onus is on the defendant proactively to request confidentiality or if the court should invite such a request. The exact timeframe for making such a request is also unspecified, leaving room for potential procedural mistakes.

This ruling also sets a precedent for interpretating Rule 198.1 RoP, which provides that the time period for the applicant to bring action on the merits starts “from the date specified in the Court’s order”.

In its original order of September 25, 2023, the Milan LD set a date that Progress failed to comply with. However, the CoA reversed this order, ruling that the date set was contrary to the purpose of the measures and to the UPC “Guidances”.

Where are we now? A patchwork of practices…

Months after the CoA’s Progress order, first-instance courts have continued to hear applications for preserving evidence. Yet, the call from the CoA to apply the wording of the guidance as to the start of the deadline to sue has not been consistently heard or applied by the LDs.

(1) On August 26, 2024, the Copenhagen LD⁴ granted an ex parte order, which would be revoked if the applicant did not file an action on the merits within 31 calendar days of the execution of the order, ignoring the CoA’s recommended wording and even dropping the RoP’s 20-working-day alternative.

This mirrors systems like France, where once the saisie-contrefaçon is executed, defendants have a strict one-month deadline to request confidentiality measures to be taken, but the countdown clock to bring action on the merits starts ticking from the day of the execution of the order. In such system, applicants often sue before seeing the evidence, reserving the right to amend later. One could argue that this constitutes a functional but arguably inefficient approach that can lead to delays and potentially unnecessary litigation.

(2) On December 23, 2024, the Paris LD⁵ granted ex parte orders and linked the deadline to sue to the submission date of the expert’s written report on the measures taken to preserve evidence.

Similarly on January 22, 2025, the Hague LD⁶ used this same wording in another ex parte order.

While slightly different, this approach is still very strict, as reports are typically lodged with the court almost immediately after execution of the order, offering little extra time compared to the Copenhagen approach. (3)

Finally, on March 26, 2025, the Düsseldorf LD⁷ granted an ex parte order and adopted the CoA-recommended wording—at least substantially:

“Inspection and evidence preservation measures shall be cancelled or otherwise cease to have effect at the request of the Respondents if the Applicant has not brought an action against the Respondents within a period not exceeding 31 calendar days or 20 working days, whichever is the longer, after the written description to be prepared pursuant to subparagraph IV. has been disclosed to the Applicant or the Court has decided by final decision not to grant access to that description.”

Striving for predictability

The UPC is still finding its feet, and procedural wrinkles are inevitable. However, the inconsistent application of rules surrounding evidence preservation, confidentiality, and crucial deadlines is concerning. The reversal by the CoA in Progress v. AWM and Schnell highlights the urgent need for clearer, binding rules, potentially through a formal RoP revision, to ensure fairness and predictability across all divisions.

Compared to the French procedure of saisie-contrefaçon, the UPC appears to be nudging towards a more sequential process, where both defendants and applicants have distinct, non-overlapping time periods to act. In a system designed to be ‘front-loaded’, where initiating proceedings involves significant fixed fees, allowing patent holders to make an informed assessment based on the gathered evidence seems not just fair, but essential.

The challenge now lies with the UPC judges (and indeed, with applicants crafting their requests) to embrace and consistently apply the CoA’s intended logic, fostering the credibility and effectiveness the UPC system needs.

Footnotes

_{1. Directive 2004/48/EC of the European Parliament and of the Council of April 29, 2004 on the enforcement of intellectual property rights}

_{2. Directive (EU) 2016/943 of the European Parliament and of the Council of June 8, 2016 on the protection of undisclosed know-how and business information (trade secrets)}

_{3. We could cite Rule 196(1) RoP, which confirms that the court may order that descriptions of evidence, samples, allegedly infringing goods, etc. be disclosed only to certain named persons and subject to appropriate terms of non-disclosure.}

_{4. Hybridgenerator v HGSystem ApS, HGSystem Holding ApS, Infotech Concept ApS and Infotech Holding ApS, Copenhagen Local Division, August 26, 2024 (ORD_48581/2024)}

_{5. TIRU v VALINEA ENERGIE, Paris Local Division, December 23, 2024 (ORD_67654/2024)}

_{6. Mammoet Holding B.V. v P.T.S Machinery B.V., The Hague Local Division, January 22, 2025 (ORD_3693/2025)}

_{7. OTEC Präzisionsfinish GmbH v STEROS GPA INNOVATIVE S.L., Düsseldorf Local Division, March 26, 2025 (ORD_14757/2025)}