The “saisie-contrefaçon” is a long-standing evidentiary measure familiar to French intellectual property practitioners. It has been successfully incorporated into the framework governing the Unified Patent Court (“UPC”), which has been in force for two years. The main points to remember are presented below.
French intellectual property law has long benefited from an exceptional measure to establish the existence and materiality of alleged acts of infringement: “saisie-contrefaçon”.
This measure is also found in Belgian and Italian law.
Dubbed the “queen of evidence” due to its element of surprise (in France, it is obtained by an ex parte application), its broad scope, and the difficulty of challenging it (either through an emergency application for retraction to obtain the withdrawal of the order authorizing it, or through a request to annul the resulting seizure report), French practitioners were pleased to see it integrated into the rules applicable to the UPC since June 1, 2023.
For reference, the UPC currently brings together 18 EU Member States, including France. It offers a uniform, specialized, and efficient framework for patent litigation at the European level, handling actions for infringement and invalidity. The Court has exclusive jurisdiction over so-called “classic” European patents and those with unitary effect (“unitary patents”)[1].
While the terminology changes (it is no longer a request to be authorized to carry out a saisie-contrefaçon, but rather an application for preservation of evidence and/or an on-site inspection), its evidentiary objective remains the same: to obtain “provisional measures to preserve relevant evidence in respect of the alleged infringement” (Article 60 of the Agreement on a Unified Patent Court, or “AUPC”), with a much broader territorial scope than before. prompt and effective
This application, used effectively in several proceedings over the past two years, can be made before the initiation of an action on the merits or during the proceedings.
Conditions for Obtaining the Order
This order for preservation of evidence must, in principle, be requested inter partes, ex parte requests being the exception before the UPC.
To obtain an ex parte order, the applicant must request and justify it, “in particular where any delay is likely to cause irreparable harm to the to the proprietor of the patent, or where there is a demonstrable risk of evidence being destroyed” (Article 60(5) AUPC and Rule 197(1) of the Rules of Procedure or “RoP”). The Court decides at its discretion and may take into account an urgency criteria. The Court of Appeal recently found acceptable a two-month delay between the time the applicant was informed of the facts of infringement and the time the application for preservation of evidence was made[2].
To decide whether the order can be made ex parte, the Court does not need to assess the validity of the patent, as this is the responsibility of the judge ruling on the merits or on a request for provisional measures, except where the presumption of validity can clearly be called into question[3].
In practice, the Court seems to have adopted a practical and flexible approach to this condition.
The applicant must also present “reasonably available evidence to support the claim that the patent has been infringed or is about to be infringed” (Article 60(1) AUPC). The Court ensures compliance with this condition and will closely examine the evidence provided by the applicant.
As is customary, the applicant has a duty of loyalty in presenting the facts, whether to establish the likelihood of infringement or to justify their ex parte request.
Finally, the applicant may be required to provide appropriate security for legal costs and other expenses incurred or likely to be incurred by the defendant, and for compensation for any damage for which they may be liable. Such security may be required, especially when the order is made ex parte.
Execution and Use of the Results Obtained from the Seizure Measures
The applicant may request a descriptive seizure, with or without sampling; an actual seizure of the allegedly infringing products, equipment, and instruments used for the production or distribution of these products, “or any related document”; the preservation and disclosure of digital media and data (Article 60(2) AUPC and R.196(1) RoP).
Confidentiality measures may be requested to protect seized confidential information.
At the UPC level, the person responsible for carrying out the measures “is a professional or expert who guarantees expertise, independence and impartiality” (R.196(5) RoP). If permitted by national law, this person may be a judicial officer or assisted by a judicial officer.
This person must submit a written report to the Court, in accordance with the applicable national law of the place where the measures are executed, within a period set by the Court.
Finally, the results of the seizure measures may, in principle, only be used in the context of the proceedings on the merits. This clarification is important, as patent litigation is often multi-jurisdictional.
Obligation to Initiate Action on the Merits
Article 60(8) AUPC provides that the applicant must initiate an action on the merits within 31 calendar days or 20 working days (whichever is longer), failing which the effects of the preservation of evidence measures will be revoked or cease.
While these time limits may seem familiar to French practitioners, their starting point differs: under French law, the period runs from the date of the seizure operations, whereas before the UPC, it is the Court itself that sets the starting date in its order.
The Court of Appeal held that the starting point could be the date on which the evidence was communicated to the applicant, or the date on which the Court rendered a final decision refusing the applicant access to the evidence. These starting points meet the objective of such a measure, namely to be able to use the resulting evidence in the proceedings on the merits[4], while remaining pragmatic and in line with the UPC’s primary objective: to ensure rapid and effective justice in patent matters.
Anticipating the Application for Preservation of Evidence by Filing a Protective Letter
As the UPC is the result of a European construction, the use of protective letters, known in German law, has been incorporated.
A protective letter is filed with the UPC Registry by a person who considers it “likely that an application for provisional measures against him as a defendant may be lodged before the Court in the near future”, in which they indicate the expected facts, as well as any assertion of patent invalidity, justified in fact and law (Rule 207 RoP). Valid for six months (renewable), it is not public and will be transmitted to the judge and the applicant if an application for provisional measures or preservation of evidence is made.
In the case of an application for preservation of evidence, the judge will thus assess this application in light of the protective letter.
Conclusion
In two years of existence, around fifteen decisions have been rendered by the various divisions of the UPC on this subject, notably by the French, Italian, and Belgian divisions, which already had regular practice with saisie-contrefaçon. The judges have shown that they can react quickly and pragmatically, authorizing such measures at trade shows and professional fairs, where the exposure time of the allegedly infringing object is short.
[1] https://www.unifiedpatentcourt.org/fr/juridiction/presentation
[2] UPC, Court of Appeal, July 15, 2025, UPC_CoA_002/2025
[3] UPC, Court of Appeal, July 15, 2025, UPC_CoA_002/2025
[4] UPC, Court of appeal, July 23, 2024, PMA v AWM and Schnell, UPC_CoA_177/2024