IP Insights: What ist the best venue for the preservation of evidence

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As we all know, facts win cases. Thus, it is important that the UPC may order the inspection of premises and the preservation of evidence. This possibility also exists under German national law. Tobias, in what relevant aspects do German national inspection proceedings differ from UPC inspection proceedings? A first and obvious difference is that UPC inspection proceedings allow for the possibility to collect evidence in all UPC member states, whereas German national inspection proceedings only allow for the collection of evidence in Germany. And one could think that a UPC inspection order, relating to potentially more than one member state, could take longer to obtain, right? But we have seen that the inspection orders issued by the UPC so far, namely by the Local Divisions in Brussels and in Milan, were issued in fast-track proceedings in light of upcoming exhibitions of the relevant products. Yes, the order of the Brussels Local Division was issued within one day by the standing judge and the expert had to provide the expert report within seven days after the inspection took place. The court saw a need for a timely report since proceedings on the merits had to be brought within 31 days after the date specified in the inspection order. That is interesting, because no such time limit exists under German national law to bring the main action after the inspection proceedings. So, this could be one possible explanation why inspection in German generally tends to take a little longer. Getting an inspection order can take up to a week and another 2-4 months can pass until you finally obtain the expert opinion. However, UPC inspection proceedings also come with disadvantages. For example, both the Milan and the Brussels Local Division chose the expert to conduct the inspection from the respective national lists of experts. In Germany, the applicant may freely choose the expert, although the expert must of course be a neutral person. A second disadvantage could be the requirements for obtaining an ex-parte inspection order. German courts basically always order the inspection without having heard the defendant beforehand, which renders inspection an efficient tool to surprise the defendant. While ex parte inspection id also an option at the UPC, it in the UPC’s discretion whether to grant the order ex-part or not. So, at least for the time being we cannot know whether, for example, not wanting to surprise the defendant would qualify as a sufficient reason for an ex parte inspection order at the UPC. Last but not least, an important aspect for any applicant is costs. In Germany, costs for inspection proceedings are manageable and cases are often settled after the inspection before a main action is brought. The reason is: the expert opinion provides an indication of the infringement. Interestingly, in the decision of the Brussels Local Division, the decision on costs was expressly stayed until the main action. The orders of the Milan Local Division didn’t contain an express decision on costs but they did address the duty of the applicant to provide security for the defendant’s legal costs and potential losses. Exceptionally, a security was not ordered, particularly because of the urgency of the inspection. While in both the UPC and national proceedings there is a duty to compensate for losses caused by the preservation of evidence, this claim is oftentimes useless because these measures typically do not cause any losses. Summing up: Whether the UPC or Germany is the better option for the preservation of evidence in your case, will depend on its particular circumstances, since both options come with advantages and disadvantages.