UPChronicle - February 2026

This edition of the UPChronicle examines key procedural mechanisms available to parties for obtaining evidence and information.

First, we consider orders to produce evidence under Article 59 UPCA and Rule 190 of the Rules of Procedure ("RoP"), which enable parties to compel disclosure of specific documents. Second, we turn to orders to communicate information under Rule 191, a tool particularly relevant for tracing distribution networks and supply chains following a finding of infringement. Third, and perhaps most distinctive of the UPC's armoury, we explore orders to preserve evidence - the saisie - under Rules 192 to 198, together with the closely related power to order inspections of premises and products in situ under Rule 199. These measures, which may be granted ex parte, allow patentees to gather non-public evidence of suspected infringement.

Throughout, we draw upon recent decisions from the Court of Appeal and various local and central divisions to illustrate how these provisions are being interpreted and applied in practice. What emerges is a nuanced framework in which the Court exercises a broad discretion, but one guided by proportionality, the protection of confidential information, and a careful regard for the legitimate interests of all parties, including third parties drawn into the fray.

Orders to produce evidence

Article 59 UPCA and Rule 190 permit a party that can identify specific evidence in the control of another party, and who provides reasonably available and plausible support for its claims, to obtain an order compelling production of documents.

The Court has confirmed that such orders are open to claimants and defendants (Guangdong OPPO v Panasonic and Promosome v BioNTech). The UPC may order the opposing party to produce evidence provided that the evidence is within said party's control and the applicant provides 'reasonably available and plausible' supporting evidence and ties any request to a genuinely disputed, material fact (Promosome v BioNTech). If a fact is not relevant to the claims (or defences) being pursued, an order for the production of evidence is unlikely at least for proportionality reasons (Promosome v BioNTech).

To protect the interests of relevant parties, safeguards are provided. First, orders shall not result in an obligation of self-incrimination. Second, the provision of evidence is subject to the protection of confidential information (Promosome v BioNTech). This may be particularly relevant where orders to produce evidence include a request for licence agreements in FRAND cases (Promosome v BioNTech and Huawei v MediaTek). If the UPC is prepared to grant production of licences, which is never certain, it is generally reluctant to order production of broad classes of licences sought from the SEP holder, and instead is more willing to order production of a limited number (Huawei v MediaTek). In such cases, the irrelevant parts of documents may be redacted if the disclosing party does not intend to rely on those facts in its legal submissions (Huawei v MediaTek). Moreover, orders may specify to which persons the evidence is to be produced, to limit dissemination of confidential information.

Orders may specify the conditions, form, and time period for the evidence to be produced, along with any sanctions that would be imposed were the evidence not produced. In addition, the Court will take any failures to produce evidence into account when deciding upon the relevant issue.

Order to communicate information

Under Art. 67 of the UPCA, the Court may order an infringer or a third party to provide certain information in response to a justified and proportionate request from the applicant. This requires the applicant to demonstrate that the requested information is reasonably necessary for the purpose of advancing their case (Abbott v Dexcom). Such orders will assist in the calculation of damages (after trial) although may also be used in provisional measures proceedings, to the extent that the information is required prior to a decision on the merits.

Rule 191 of the RoP provides that any order must protect confidential information (likely pursuant to a confidentiality club), take any third party's interests into account, and inform the respondent of their right to appeal (as is the case for orders to produce evidence).

The information to be provided under Art. 67(1) may include the origin and distribution channels of the infringing products or processes; the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the infringing products; and the identity of any third person involved in the production or distribution of the infringing products or in the use of the infringing process (Abbott v Dexcom).

Under Art. 67(2) a third party may be ordered to provide the above information if they are found in the possession of the infringing products, using an infringing process or providing services used in infringing activities (in each case on a commercial scale) or was involved in the production, manufacture or distribution of the infringing products or processes or in the provision of the services.

Orders to preserve evidence (the "saisie")

Orders to preserve evidence under Article 60 UPCA and Rules 192 to 198 are inspired by the French and Belgian concepts of saisie-contrefaçon enabling patentees to gather non-public evidence of a suspected patent infringement on an ex parte basis.

The measures are used for identifying technical information and for clarifying whether infringing conduct is occurring or likely to occur. The standard of proof is "a certain degree of plausibility of the infringement or the threat thereof" where "certain degree" means "highly likely" (Genentech v Organon). As such, the applicants have the burden of presenting and proving the facts necessary to convince the court.

The evidence seized may include descriptions, samples, and written materials (Maguin v Tiru). The saisie is typically executed by an independent expert appointed by the Court. After the saisie is conducted, the expert will often write a report (Progress Machinen v AWM). The applicant is not entitled to be present during the inspection (Genentech v Organon).

The measures may be granted ex parte where appropriate such as where delay is likely to cause irreparable harm to the applicant and/or where there is a demonstrable risk of evidence being destroyed (Maguin v Tiru).

To proceed ex parte the applicant: (i) must set out the reasons for not hearing the defendant; and (ii) has a duty to disclose any material fact that might influence the Court in deciding whether to make an order without hearing the defendant (similar to "full and frank disclosure" in the English courts) (Ecovacs v Roborock). Nevertheless, the UPC may decide to inform the defendant about the application (or summon the defendant to an oral hearing) but before doing so will consider the urgency of the action and the probability that evidence may be destroyed or otherwise cease to be available (Genentech v Organon).

Where measures to preserve evidence are ordered without the defendant being heard, the defendant shall be given immediate notice of the orders and at the latest immediately after the execution of the measures. The defendant is entitled to ask for a review hearing for the Court to decide whether the measures may be modified, revoked, or confirmed. The Court will revoke the measures, at the defendant's request, if the applicant does not bring, within a given time frame, an action leading to a decision on the merits (Progress Machinen v AWM).

The measures to preserve evidence may be subject to the lodging by the applicant of adequate security or other assurance intended to compensate for any prejudice potentially suffered by the defendant (Genentech v Organon). Where the measures to preserve evidence are revoked, or where they lapse due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement of the patent, the Court may order the applicant to provide the defendant with appropriate compensation for any damage suffered.

The saisie provisions of the RoP must be read in conjunction with Directive 2004/48/EC on the enforcement of intellectual property rights and in particular Article 7 concerning measures for preserving evidence, which provides that, even before the commencement of proceedings on the merits of the case, measures to preserve evidence must be capable of being ordered, if necessary without the other party having been heard, in particular where any delay is likely to cause irreparable harm to the rightholder or where there is a demonstrable risk of evidence being destroyed (Maguin v Tiru).

Pursuant to a saisie, highly confidential and invasive information may be obtained by the appointed expert. If necessary, the Court will order that information seized and the subsequent expert report to be only shown to representatives under a confidentiality club (Progress Machinen v AWM and Genentech v Organon).

Order for inspection

Under Article 60 and Rule 199, the UPC may order an inspection of "products, devices, methods, premises or local situations". Such orders are available before the commencement of an action and permit a prospective claimant to verify facts. Orders for inspection are particularly useful where a product thought to infringe the patent is only briefly available at a trade fair or where the suspected infringement relates to process claims, where it may be challenging to show that a product has been made by following a patented process.

As the power under Rule 199 is merely to inspect in situ, orders for inspection are often sought alongside an order to preserve evidence (discussed above under Rules 192 to 198). If successful, an inspection will be carried out by a person appointed by the Court. Often this is a technical expert and their purpose is to evaluate the gathered/preserved information and use only such evidence which they deem necessary to prove or disprove the actual infringement of the patent-in-suit (Organon v Genentech).

Like saisies, the applicant for an inspection order may not be present when the inspection takes place, however the applicant may be represented at the inspection by an independent professional practitioner. Inspection orders may be made on an ex parte basis, including where any delay is likely to cause irreparable harm to the applicant or where there is a demonstrable risk of evidence being destroyed. The Court can order measures to protect confidential information which has been inspected where the respondent asserts an interest in secrecy (OTEC v STEROS, noting that a respondent must actively claim confidentiality to receive protection).

To obtain an order for inspection the applicant must present reasonably available evidence to support the claim that the patent has been infringed or is about to be infringed (Valinea Energie v Tiru and Organon v Genentech). The applicable threshold for obtaining an order is that the patent is "about to be infringed", which must be proven by the applicant with a certain degree of plausibility in the sense that there must be a risk of infringement and it must be apparent that it will occur in the future (Organon v Genentech). The term "about to be infringed" does not have the same meaning as "unreasonable delay" in applications for provisional measures pursuant to Rule 211 RoP (Organon v Genentech).

When seeking an order, the applicant must identify the premises where the inspection is to take place and the reasons why the inspection is needed to preserve relevant evidence. The inspection extends only to what is found at the premises and the defendant is not obliged to procure items not located at the premises - for example, if a potentially infringing machine cannot be found at the premises, the order for inspection does not oblige the defendant to bring the machine to the premises so as to allow the applicant to inspect it (Centripetal v Palo Alto Networks).

Conclusion

In conclusion, understanding the nuances of patent infringement and the specific requirements for obtaining evidence is crucial for both patent holders and alleged infringers. The legal landscape surrounding these issues is complex and continually evolving, making it essential for practitioners to stay informed. We promise to bring you more insightful updates and analyses in next month's edition, including recent case studies and emerging trends in patent law.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.