Rule 196 – Order on the Application for preserving evidence

1- General

1- Rule 196 must be interpreted in the light of Rule 192 relating to the Application for preserving evidence. Rule 196 defines namely the result of the Application i.e. the order issued by the judge upon the Application lodged.

2- The order thus contains provisions on the measures which are authorized by the judge in view of what has been requested by the applicant in the Application for preserving evidence.

3- The list given in Rule 196, of what the Court may order, must be considered as a general frame : the list is not limitative. This means that the requested actions indicated in the Application for preserving evidence may contain more than what is listed in Rule 196. The Court is free to decide to accept or refuse actions requested by the applicant.

4- On the other hand, the Court is bound by the Application for preserving evidence which has been lodged. The Court may not add measures which have not been requested by the applicant. For example, the Court may not order to seize samples if this has not been requested in the Application as lodged. The Court may also refuse to order certain measures requested and may limit the scope of the requests. For example, the Court may order to seize only one sample while the applicant had requested five or six samples. This could be the case if the Court is not convinced by the arguments of the applicant that five or six samples are necessary for evidence.

5- In addition, Rule 196 provides that the order may contain also optional indications relating to the conditions to be met for enforcing the order and performing the measures requested for preserving evidence. Those indications may not have been provided in the Application lodged. Among those indications are provisions concerning the persons who may represent the applicant when the measures ordered are performed as well as provisions concerning the protection of confidential information.

6- Finally, Rule 196 contains provisions on compulsory indications which the order should contain, relating to the person who shall carry out the requested measures and present a written report.

Those indications, which may or may not have been mentioned in the Application lodged, serve clearly to define the general frame within which the preservation of evidence is authorized.

7- The definition given in Rule 196 of this frame for the preservation of evidence is essential for such a powerful tool, particularly when the order is granted without the other party having been heard. The entire court proceeding must namely respect the balance between the interests of both parties.

The plaintiff benefits of a strong way of preserving evidence, but this should not place the defendant in an excessively unfair position.

This justifies the provisions of Rule 196 on the various conditions imposed and on possible securities and safeguards of confidentiality.

2- Possible acts which can be performed when preserving evidence

2.1- The description and taking of samples

8- The order of the Court may provide that a detailed description of the alleged infringement be made, optionally with the taking of samples. In practice, such a detailed description may include photographs or videos of the alleged infringement as well as drawings, in addition to a description by words.

If samples are taken, a description of the samples and of their origin may also be made.

9- As explained below, Rule 196 also defines the person who shall carry out the measures to preserve evidence. However, no specific indication is provided as to the way the description should be made. While the person mentioned above is responsible of presenting a written report, it is not clear that the description should be made by this same person. It does not seem impossible that the description be made by the person representing the applicant, for example the patent attorney of the applicant, as long as the report clearly indicates how the description has been made. In any case, the presence of the person specified by the Court continues to guarantee the truth and quality of the description made.

The Court will ultimately appreciate the evidence afforded on the basis of the report of the person specified by the Court for carrying out the measures ordered.

10- This could therefore possibly differ from the present French “saisie-contrefaçon” procedure where it is required that the description be made by the bailiff and not by the patent attorney accompanying the bailiff. This requirement is in practice somewhat artificial since it is always the patent attorney who has to explain in detail what the bailiff has to acknowledge in the description.

2.2- Disclosure of digital media and data

11- Rule 196.1(d) provides the possibility to “preserve” and “disclose” digital media and data.

In practice, disclosure of digital data contained in the memory of a computer or similar IT system may require a password. The Rule clearly provide that the Court may order the disclosure of any such password. A refusal of the defendant to disclose a password will be mentioned in the written report and appreciated by the Court.

12- The content of the digital media and data mentioned in the rule is not specified. It could relate to the nature and production of the alleged infringement or to any related commercial information such as prices, profit margins, sold amounts or distribution processes. The disclosure of digital data may be materialized by a printed paper copy or a digital copy of said data, even if nothing of that sort is indicated in the Rule.

13- The preservation of a digital media, such as a computer hard disk for example, may require also a digital copy of the content of the disk.

The rule is silent as to the possibility to physically seize the hard disk itself, without having to take a copy of its content. Such a seizure should be precisely requested and provided in the order of the Court. This seems possible in view of the fact that the list of possible measures in Rule 196.1 is an open list.

It can also be considered that the physical seizure of the materials used in the production and/or distribution of the alleged infringing goods and related documents, provided in Rule 196.1(c), include seizure of digital media.

2.3- Physical seizure of allegedly infringing goods, or of materials and implements used in the production of those goods

14- The seizure of allegedly infringing goods has to be differentiated from the seizure of samples, which is made for the purpose of affording evidence of infringement.

Seizing those goods without any limitation could completely disrupt the activities of the defendant.

The physical seizure of the materials and implements used in the production, for example a mold or a machine used for the production of allegedly infringing products, could also disrupt the activities of the defendant. This is not the case if those materials and implements are for example, production drawings or digital data, the seizure of which does not lead to a stop of the production.

15- The physical seizure of materials which lead to a stop of the production, appears more like a kind of punishment or reparation of infringement which should normally be decided by the Court after the decision on the merits.

Apart from the specific situations mentioned above, such physical seizures do not appear necessary to afford evidence of infringement. An order of the Court including such kind of physical seizure would have to be justified by particularly strong arguments indicated in the Application, explaining why this seizure is necessary.

2.4- Physical seizure of materials and implements used in the distribution of alleged infringing goods

16- Obtaining evidence about the details of the distribution process of the alleged infringing goods may be part of the preservation of evidence. It may give useful information to the plaintiff to allow calculation of the damages resulting from the infringement. This information may therefore allow the plaintiff to mention already in the Statement of claim a precise estimation of the damages to be requested. If preservation of evidence is performed before lodging the Statement of claim, information on the distribution process may simplify the Court procedure and allow the Court to decide on damages in the decision on the merits, without the necessity to engage a special action for determining the damages.

17- This provision can also be interpreted as relating to accounting documents, including information on profit margins and prices of the alleged infringing goods.

The physical seizure would then relate to either paper accounting documents or digital data and media.

3- Enforceability of the order

18- According to Rule 196-3 an order on an Application for preserving evidence shall be immediately enforceable, unless the Court decides otherwise. This seems to differ from the normal enforcement procedure provided in Article 82 of the Agreement and confirmed in Rule 354. For such an order namely, no service to the defendant is required.

19- Nevertheless, the enforcement should certainly follow the procedures governed by the national law of the Contracting Member State where the enforcement takes place, as provided in Rule 354. This is confirmed by the provisions of Rule 196-4 stating that the measures to preserve evidence shall be carried out in accordance with the national law of the place where the measures are executed.

20- In any case, according to Article 82(3) of the Agreement, a Court decision or an order of the Court shall be enforced under the same conditions as a decision, or order, given by a national court of the Contracting Member State where the enforcement takes place.

As an example, an order issued by a French judge for a so called “saisie-contrefaçon”, is enforceable without any additional step by the bailiff in charge of the execution of this operation.

21- If the Court decides that the order is not immediately enforceable, the Court will set certain conditions, which have to be met before the order can be enforced. Those conditions will be stated in the order itself.

22- The most obvious conditions may be time conditions : for example the order has to be enforced before a certain date indicated in the order. On the contrary, the Court may decide that the order can not be enforced before a certain date or on certain days. This could be the case for example if preservation of evidence is requested during opening days of an exhibition : the Court may decide for example that the most important day of the exhibition be avoided.

23- Other conditions are stated in Rule 196-3.

3.1- Conditions of enforceability

24- In fact, Rule 196-3 only mentions conditions pertaining to representation of the applicant when preservation of evidence is carried out and to possible securities.

Nevertheless, these conditions are mentioned as mere examples, leaving open the possibility for the Court to specify other types of conditions of enforceability.

25- According to Rule 354, an order of the Court is directly enforceable from its date of service in each Contracting Member State and enforcement shall take place in accordance with the local procedures and laws of said Contracting Member State where enforcement takes place.

The conditions set by the Court for enforceability of the order will therefore be examined in accordance with national law, which may require translation in a local language. However, it is not clear how enforcement could be refused since the order is “directly enforceable”.

26- The defendant may, subsequently, obtain reparation if conditions set in the order have not been complied with and the order nevertheless enforced. (see Rule 354-4).

In addition, specific penalties may be imposed by the Court, according to Rule 196-3 (see below).

3.1.1- Conditions relating to representation of the applicant

27- The fact that representation of the applicant during the operations of preservation of evidence is mentioned as a condition of enforceability clearly shows on the one hand that representation is an important factor of success of the preservation of evidence and, on the other hand, that some limits must be drawn up to such representation.

28- Rule 196-3(a) allows the court to provide in the order for limitations of the representation during preservation of evidence.

As previously mentioned, the Court order cannot contain more than what has been requested in the Application. However, the Court may well limit the requests of the applicant. This certainly applies here for representation : the order may not provide for representation of the applicant if nothing has been mentioned about representation in the Application. However the order may limit representation requested, stating for example in the order, the name and quality of the persons authorized to represent the applicant. The order may also exclude any representation of the applicant if the Application fails to organize representation, leaving the impression that anybody could represent the applicant.

29- According to Rule 196-3(a), the order of the Court may identify the person or persons representing the applicant. It can be assumed that the Application for preservation of evidence will have given some orientation to the Court in this regard. If one or several names are given in the Application, the Court will either accept those names or reject them. If only a general statement such as “a patent attorney”, is given in the Application, the Court may provide for a more precise definition in the order.

30- In addition to the definition of the persons representing the applicant, Rule 196-3(a) sets conditions relating to representation : under what conditions can a person be authorized to represent the applicant. If this person is not member of a professional organization submitted to a strict code of conduct, such a condition could be for example the submission of a confidentiality declaration under oath.

3.1.2- Conditions relating to security

31- Providing a security may be indicated in the Application when it may be expected that the preservation of evidence will harm the defendant in some way. This can be provided by the applicant to facilitate the issuance of the Court order.

32- Even if no security is mentioned in the Application, Rule 196-3(b) allows the Court to make such security a condition of enforceability of the order. This is an example of statement which the Court may introduce in the order even if the Application does not mention it. Rule 196-6 details when such security will be requested from the applicant (see below)

33- When a security has been provided in the order, the specified deposit or the guarantee of the bank, must occur before preservation of evidence is carried out. Otherwise, the order cannot be enforced.

3.2- Penalties

34- According to Rule 196-3, the Court may set penalties if the conditions for enforceability are not observed. The procedure to force payment of those penalties is stated in Rule 354-4 relating generally to failure to comply with the terms of a Court order.

35- This will certainly only apply after completion of the preservation of evidence.

The Court will have to appreciate whether the entire operation should be revoked or only the penalties paid.

4- How the measures should be carried out

36- In the order the court has the power to state certain guide lines on how the preservation of evidence shall be performed. Even if the Application does not give precise indications, the order shall organize the basic way to perform the preservation of evidence.

37- The order shall particularly state the importance of national provisions and provide precisions relating to the person who shall perform the preservation of evidence and indications as to the representation of the applicant during the operation.

4.1- National law provisions

38- Rule 196-4 mentions the national law of the place where the measures are executed, in connection with the written Report which the person carrying out the measures should draft. The rule can also be interpreted as submitting the entire execution of the measures to this national law.

39- However, national laws on patent matters of the Contracting Member States have been adapted to the EU Directive 2004/48 EC on the enforcement of IP rights and do not generally contain more than what stands in Article 7 of the Directive which has been introduced in the Agreement.

Only general procedural provisions in the respective Contracting Member States will therefore have to be considered.

40- For example in France, such kind of operation as evidence preservation, similar to “saisie-contrefaçon” can only be executed by a bailiff. Consequently, preservation of evidence according to an order issued by the Unified Patent Court can only be executed in France with a bailiff, either alone or as an accompanying person.

41- Other general procedural provisions of national laws may relate to regulations concerning the hour of the day when preservation of evidence can be performed at the premises of a company located in said Contracting Member State : in France a bailiff is not authorized to act between 9pm and 6am unless there are specific circumstances.

42- General provisions may concern the language of an enforceable court order : a translation in an official language of the Contracting Member State will normally be required by national law. In the same way, the written description of the preserved evidence should normally be established in an official language of the Contracting Member State so that the defendant may understand that description and make any appropriate comment if he wishes to do so. And a copy thereof should be given to the defendant at the end of execution of the preservation of evidence.

43- Again in France, the defendant must first accept to formally receive a copy of a court order before the bailiff can validly begin to execute the order. And reasonably sufficient time must be given to the defendant to take knowledge of the order.

All this is regulated by national law . For example Article R 615-2-1 of the French IP code makes it compulsory for the bailiff to serve the order of the court before beginning the operations for infringement seizure. The bailiff must also leave a copy of his written report to the seized party at the end of the operations.

4.2- The person who carries out the measures

44- Rule 196-4 provides for the designation in the order of a person who shall carry out the measures for preservation of evidence and present a written Report.

This report is the essential result of the operation and will be presented to the Court.

45- According to Rule 196-5, the person designated by the Court must be independent and impartial. This person must also be a professional or an expert. It seems clear that such professional or expert must be specialized in patent matters : this is the meaning of the “professional” or “expert” qualification.

46- It is up to the Court to choose this person according to the requirements of the Rule. Of course, the applicant may suggest a name in the Application and may present any argument and evidence justifying the proposal. However, the Court may well decide differently and will anyhow do so if the Application contains no suggestion.

47- If the Court decides to designate an expert, this person could be taken from a list of experts held by the Registrar. The list should preferably indicate the special technical background of each expert, the languages in which the expert is able to draft the written report and the present and past occupation of the expert, allowing the Court to appreciate the real independence and impartiality of the expert in a given matter.

48- If the Court decides to designate a professional person, the choice could be made among different sorts of professionals :

  • - Representatives according to Article 48(1) or 48(2) of the Agreement i.e. lawyers authorised to practise before a court of a Contracting Member State or European Patent Attorneys having appropriate qualifications
  • - European Patent Attorneys
  • - National patent attorneys
  • - Patent professionals working in industry

49- If the person designated is an expert or a patent professional, the independence should be guaranteed by the applicable professional rules, at least for experts and European patent attorneys. In the Contracting Member States, national patent attorneys are also submitted to the provisions of their code of conduct guarantying their independence.

50- The impartiality condition should be checked by the Court for each specific case. A declaration under oath reciting past and present professional activities could be required by the Court in this regard.

51- When the order for preserving evidence is issued without hearing the defendant, the Court must be particularly cautious to avoid any risk of conflicting situation in relation with the defendant. Clearly the professional person designated should not have handled a case on behalf of the applicant or the defendant in the past. This is the main condition required for impartiality of a professional person.

52- Rule 196-5 also mentions the possibility for the Court to designate a bailiff, if this is allowed under applicable national law. Alternatively, the person designated by the Court may be assisted by a bailiff. If for example, the preservation of evidence is practiced in France, a bailiff will be required in accordance with national law. It may be advantageous that the order designates nevertheless an expert or a professional person in addition to a bailiff who will then assist the expert or professional person.

The expert or professional person will namely be better able to make a technically accurate description of the alleged infringing goods or method than a bailiff.

53- The defendant has always the possibility of challenging the choice made by the Court in this regard by appealing the order afterwards according to Rule 220-2

4.3- Representation of the applicant

54- The independent person designated in the order for carrying out the preservation of evidence, who may be a bailiff, is not fully informed of the patent involved and on the details of the alleged infringement. In the absence of anybody representing the applicant, it could be difficult to the independent person designated by the Court to find and describe the necessary evidence.

55- The Agreement expressly mentions in Article 60(4), for the similar situation of the inspection of premises, that the applicant itself cannot attend the operations and Rule 196-5 clearly states that no employee or director of the applicant is allowed to be present during the operations of preservation of evidence.

56- The only person who could therefore help the independent and impartial person designated by the Court, is a person representing the applicant. The Agreement in its Article 60 relating to the order to preserve evidence and to inspect premises, does not provide for any person representing the applicant during the preservation of evidence.

57- However, Rule 196-3(a) relating to the conditions of enforceability of the order, expressly provides for the possibility that the applicant be represented when the preservation of evidence is carried.

58- No specific indication is provided as to the person who can represent the applicant.

Only in connection with inspection of premises according to Rule 199-1, is the protection of confidential information mentioned, meaning indirectly that a person representing the applicant must be able to maintain confidentiality over any information obtained during preservation of evidence.

59- Article 60(4) of the Agreement, also relating to inspection of premises, may be interpreted as applicable to preservation of evidence. This article states that a person representing the applicant must be an independent professional practitioner who’s name has to be specified in the order of the Court.

60- It results therefore from Article 60(4) and Rule 199-1 that representation cannot be made by anybody : the person representing the applicant during the preservation of evidence must fulfil the following minimum requirements :

  • - This person must be able to maintain confidentiality
  • - This person must be independent
  • - This person must be a professional practitioner
  • - The name of this person must be specified in the order
4.3.1- First category of privileged representation

61- In order to define the person fulfilling those requirements and able to represent the applicant during the preservation of evidence, it is appropriate to consider first the definition of representation before the Court, since this kind of representation is similar.

62- Representation is defined in Article 48 of the Agreement and detailed in Rule 286. Both types of representatives, i.e. lawyers pursuant to Article 48(1) of the Agreement and European Patent Attorneys pursuant Article 48(2), clearly fulfil the requirements mentioned above regarding maintenance of confidentiality and independence. Both are also “professional practitioners”.

It follows therefore that lawyers pursuant to Article 48(1) as well as European Patent Attorneys pursuant Article 48(2), are able to represent the applicant during the preservation of evidence, as long as their name is mentioned in the order.

63- Both types of representatives are also enjoying the litigation privilege defined in Rule 288, meaning that all communications , discussions or questions addressed to any third party during the operation of evidence preservation are privileged from disclosure. This is an important consideration able to warrant that the only information, confidential or not, which will result from the preservation of evidence is the report written by the impartial and independent person designated by the Court order and in charge of the entire operation.

64- The respective code of conduct for lawyers and European Patent Attorneys warrants, (see Article 2.6 of the UPC code of conduct) on the other hand, that, if they represent the applicant, they will refrain from disclosing anything which could be seen or understood during the operation of preservation of evidence but not directly linked to the mission defined in the order of the Court. An example of this could be the discovery of another infringement of another patent not mentioned in the order.

4.3.2- Other categories of privileged representation

65- Representation of the applicant during preservation of evidence is not limited to representatives defined in Article 48 of the Agreement and authorized to practice before the Court as stated in Rule 286.

Other types of professional practitioners are also susceptible to represent the applicant during preservation of evidence.

66- This is the case for European Patent Attorneys entitled to act as professional representatives before the European Patent Office pursuant to Article 134(1) of the EPC, even if they do not have the specific qualifications requested for representation before the Unified Patent Court, so that they do not fulfill the requirements of Article 48(2) of the Agreement.

This is also the case for national patent attorneys practising in a Contracting Member State, who have a right of audience before the Unified Patent Court as stated in Article 48(4) of the Agreement.

67- Both types of representatives are also enjoying the litigation privilege defined in Rule 288, meaning that all communications , discussions or questions addressed to any third party during the operation of evidence preservation are privileged from disclosure.

4.3.3- Representation without privilege

68- Can representation of the applicant, during preservation of evidence, be also exerted by patent attorneys practising outside the EPC Member States and lawyers practising outside the European Union ?

Those persons cannot represent or even speak before the Unified Patent Court as they are outside the definitions given in Article 48 of the Agreement and Rule 286.

69- At first glance, those persons appear nevertheless to fulfil the requirements mentioned above, being professional practitioners in their country.

70- However, the litigation privilege defined in Rule 288 applies only to lawyers as persons authorized to pursue professional activities under a title referred to in Article 1 of Directive 98/5 EC (see Rules 286-1 and 287-6). It results therefrom that lawyers practising outside the European Union, who cannot represent before the Unified Patent court are not enjoying the litigation privilege as defined in the UPC Rules of procedure. The control by the Court of the requirements mentioned above could also appear difficult since it would depend from interpretation of foreign legislation.

71- For all these reasons, it can therefore be considered that lawyers practising outside the European Union are not authorized to represent the applicant during preservation of evidence. In the same way, they should not even be authorized to attend the operations of preserving evidence.

72- The situation may be slightly different for patent attorneys practising outside the EPC Member States since the definition of patent attorneys given in Rule 287-6(b) does not refer to any geographical limitation contrary to the case of lawyers defined by Article 1 of Directive 98/5 EC.

However, the difficulties of the control by the Court remain present and would also depend from interpretation of foreign legislation.

73- For this reason, it is questionable whether those patent attorneys could be authorized to represent the applicant during preservation of evidence. In the same way, they should probably not even be authorized to attend the operations of preserving evidence.

4.3.4- The independence of the professional practitioner as representative

74- What exactly means “independence” when considering representation during an operation of preservation of evidence ?

Is it sufficient to base this independence upon the respective code of conduct of lawyers and patent attorneys ?

Is it acceptable that a professional representative acts as representative of an applicant during preservation of evidence and, afterwards represents the plaintiff in the resulting infringement action before the Court ?

75- Some of those questions were answered positively by the French courts in similar situations of French “saisie-contrefaçon” procedures ordered ex parte.

The decision of the Cour de cassation dated 8 March 2005 confirmed, after several discussions among interested circles, that the “usual” patent attorney of a given company was allowed to be designated as expert of the applicant to assist a bailiff during a “saisie-contrefaçon” operation.

76- Consequently, according to this interpretation, the independence of the professional practitioner is limited to the usual independence of such practitioner vis a vis his clients. Contrary to the person carrying out the measures for preserving evidence, who must be independent and also impartial, the professional practitioner representing the applicant only needs to be independent.

77- The clear statement of the Agreement in Article 60(4), for the similar situation of the inspection of premises, and of Rule 196-5 excludes however from the definition of independent practitioners the employees of the applicant who are not allowed to be present during the operations of preservation of evidence. In other words, European Patent Attorneys who are working in industry and are employed by a company cannot represent their company during an operation of preservation of evidence based on a patent owned by their company or a subsidiary.

78- This appears to be an exception, only applicable to preservation of evidence and inspection, and does not seem to be a consequence of a lack of independence. The independence of European Patent attorneys results namely from the Code of conduct of the European Patent Institute (EPI) which is applicable to all European Patent attorneys, whatever their employment condition may be.

79- Always following this interpretation, the professional practitioner representing the applicant, is therefore independent as long as the applicable code of conduct governing its activities warrants such independence.

And nothing seems to forbid such a professional practitioner having acted as representative of an applicant during preservation of evidence, to represent the plaintiff before the Court, in a resulting infringement action.

5- Possible use of the outcome of the measures

80- The outcome of the measures for preserving evidence are constituted mainly by the written Report prepared by the person who carried out the measures. It may also comprise photocopies of documents and samples of the alleged infringing products or of products used during manufacture of the alleged infringing products or used when performing the alleged infringing method.

All this is initially in the hands of the person who carried out the measures for preserving evidence.

81- Apart from confidential information, for which specific provisions shall apply, the outcome of the measures can be handed down to the applicant after execution of the measures for preserving evidence. This will allow the applicant to prepare a Statement of claim to be lodged before the Court.

82- The applicant, acting as a plaintiff before the Court, may in some circumstances, wish to use the outcome of the measures for preserving evidence in other procedures, for example before national courts. This, however, is normally not allowed, according to Rule 196-2 and requires a specific order of the Unified Court.

83- If evidence obtained following execution of an order of the Unified Court, is filed before another court without a specific authorisation of the Unified Court, the defendant will have the possibility to argue that this evidence should not be used before that other court and request reparation of any prejudice resulting from the illegal use of results of measures for preserving evidence.

6- How the interests of the defendant are safeguarded

84- Preservation of evidence is an extraordinary procedure, particularly when it has been ordered without hearing the other party. It is therefore important that the interests of the defendant be correctly safeguarded.

The Rules provide a safeguard on some important aspects :

  • - on confidentiality of certain information
  • - on the requirements for security
  • - on the possibility of Review of the order and appeal

6.1- The protection of confidential information

85- The protection of confidential information in proceedings before the Court, is generally provided in Article 58 of the Agreement. The confidentiality is defined as toward a party to the proceedings or toward a third party. In order to protect confidentiality, access to evidence may be restricted to specific persons.

86- The protection of confidential information is also a necessary condition of the grant of an order to preserve evidence as clearly stated in Article 60(1) of the Agreement. This is repeated in Rule 196-1 which provides for practical measures which the order of the court may include : disclosure only to certain named persons and subject to appropriate terms of non-disclosure.

87- Since those provisions are mentioned as optional, the Court may well decide to provide for other specific measures capable of suitably protecting any confidential information discovered during the preservation of evidence. In the same way, the parties and particularly the applicant of the measures for preservation of evidence, may decide to protect certain information, considered by the applicant or by the party possessing said information, as confidential.

88- Other such measures to protect confidential information, as developed by the French jurisprudence, may include conservation of such confidential information by an independent and impartial person, for example the person who has been designated by the order of the Court for performing the preservation of evidence. The confidential information can then remain in the possession of that person until the panel of the Court, handling the case on the merits, will decide how to proceed.

89- The Court may, for example, nominate an independent and impartial expert with the task of sorting the documents, samples and objects constituting the confidential information, in the sole presence of the Representatives of the parties. Following this operation, the Court may decide to communicate some parts of the confidential information to the plaintiff as long as it is absolutely necessary to afford evidence of infringement. In a corresponding order, the Court may apply the suggestions contained in Rule 196-1 and request that those parts of confidential information be disclosed only to certain named persons and subject to appropriate terms of non-disclosure.

90- The confidential information which is to be protected is not only the information which may be obtained during a future operation of preservation of evidence (in that case the order of the Court will include specific provisions therefore), it is also the information which has been obtained during an operation of preservation of evidence, when the order is subsequently modified or revoked by the Court.

91- Rule 197-4 expressly mentions this situation : all persons to whom confidential information has been disclosed shall be obliged to keep this information confidential when an order to preserve evidence has been revoked after performance of an operation for preserving evidence.

6.2- The requirements for security

92- Different kinds of costs, expenses and liabilities may have to be beared in certain circumstances by the applicant, i.e. the person who applied for preservation of evidence.

93- Among those are the legal costs and expenses directly linked with the operations for preserving evidence, for example, the professional fees due to the person in charge of the entire operations, expenses of any necessary assistant such as photographer, locksmith, bailiff etc…

Another kind of liabilities are possible injuries which the defendant may suffer due to the preservation of evidence, such as costs of stopping a machine, time lost by the employees of the defendant during the preservation of evidence or professional fees of any representative of the defendant.

All this represents a potential future risk if the applicant is finally not financially reliable.

94- According to Rule 196-6, the Court has the possibility to order the applicant to provide an adequate security to cover this risk. The Court will therefore consider the situation of the applicant and take into account the extent of the requested measures.

95- An applicant residing outside the Contracting Member States or even outside Europe may be at first glance less financially reliable than an applicant residing within the Contracting Member States. Extensive measures requested for preserving evidence may lead to a higher risk of injury for the defendant. It could therefore be advisable for the applicant wishing to avoid such a security, to explain in the Application, why a security is not necessary or adequate.

96- When the order to preserve evidence is granted without hearing the defendant, the Court may have more difficulties to precisely determine the extent of the possible harm, which the defendant may suffer. For this reason, Rule 196-6 provides that a security should normally be requested when the order to preserve evidence is granted without hearing the defendant. This however is not compulsory and is only a recommended option for the Court. It is therefore also advisable for the applicant wishing to avoid such a security, to explain in the Application, why a security is not necessary or adequate.

97- When the Court has specified in the order that a security shall be provided by the applicant, the Court may simultaneously consider the establishment of this security as a condition for enforcement of the order, as provided in Rule 196-3(b).

In addition, a penalty may be set by the Court, for the case the security would not be established by the applicant (Rule 196-3).

6.3- The possibility of Review of the order and appeal

98- The defendant may request a review of the order, but only when the order has been granted ex parte i.e. when the defendant had not been informed in advance of the operation for preserving evidence. Of course, the request for review can only be made after execution of the measures for preservation of evidence, and within a short time period of 30 days after the execution of the measures.

99- The review opens to the defendant the possibility of obtaining a decision of the court to modify or even revoke the order (Rule 197-3). If the order is modified or revoked, any measure which has been executed in conformity with the original order will be considered as void. The plaintiff will not be able to use any evidence obtained by measures not anymore authorized.

100- In addition, the defendant has also the possibility to lodge an appeal against the order, according to Rule 220-1(c). Of course, if the order has been granted ex parte, the Statement of appeal can only be lodged after execution of the measures for preservation of evidence.

101- According to Rule 224-2(b), the time period for lodging the Statement of appeal is of 15 days within service of the order. According to Rule 197-2, the defendant shall be given notice “immediately at the time of the execution of the measures”. Consequently, it can be assumed that this notice is equivalent to the service of the order which triggers the time period of 15 days provided for in Rule 224-2(b).

102- In both cases - review of the order and appeal against the order- the defendant can only present arguments concerning the invalidity of the order. The decision of the Court will be limited to this question and to any modification or revocation of the order.

103- All other points which the defendant could criticize, for example relating to the execution of the measures ordered, have to be developed in the defence which follows the written statement lodged by the plaintiff on the basis of evidence collected during the ordered measures. Only within such defence, can the defendant criticize measures which exceeded the order.

In view of the different time periods (15 days for appeal and 30 days for the review), it appears more appropriate for the defendant to request a review of the order, when the order has been granted ex parte.

104- Appealing the order is more appropriate when the order is granted after hearing the defendant. In such a situation namely, the defendant may obtain from the Court of appeal a decision of revocation of the order, thus avoiding any execution of the requested preservation of evidence.

105- Normally, an appeal shall not have suspensive effect, unless the Court of Appeal decides otherwise (Article 74(1) of the Agreement). The defendant should therefore request a decision of the Court of Appeal with suspensive effect if the measures should not be executed.

106- An Application for suspensive effect has to be lodged for this purpose (Rule 223-1). Failure to obtain a favourable decision rapidly, will permit the applicant to execute the order before the appeal has been decided.

107- According to Article 74(3) of the Agreement, an appeal against an order for preservation of evidence shall not prevent the continuation of the proceedings on the merits, even if the Court of First Instance must wait for the appealed order before taking its own decision on the merits.

6.4- Simultaneous appeal and review

108- Nothing forbids the defendant to lodge an appeal against the order for preservation of evidence, and simultaneously, file a request for review of this order.

109- In the case of such simultaneous actions, while there is no specific provision on the stay of proceedings in Rule 295 which is directed to the stay of proceedings in general, it seems reasonable to assume that the court of Appeal will stay the proceedings until a decision has been issued following the request to review the order.

110- Since Rule 295(c) generally provides for a stay where an appeal is brought before the Court of appeal against an order of the Court of First Instance, it can be assumed that the proceedings for review would be stayed and not the appeal proceedings.