Whose is the first decision of the Unified Patent Court? Milan, of course!

The first UPC decision reflects the capability and efficiency of the Milan Local Division in a case of counterfeiting and request for evidence preservation (so-called description request) 28 September 2023

Shortly after the entry into force of the new Unified Patent Court (UPC) on June 1, 2023, the Milan UPC Local Division issued its first decision on June 14, 2023. This decision, issued swiftly and efficiently, also marks the first decision chronologically issued by the UPC as a whole.

The appointed Judge, Dr. Zana, was tasked with evaluating an urgent request to obtain evidence regarding a suspected case of product counterfeiting displayed at a trade fair in Milan (ITMA 2023). This request essentially amounted to a description request under Article 129 of the Industrial Property Code (CPI).

The Milan Local Division demonstrated remarkable efficiency by issuing the description order within just one day of the filing of the request. This decision is of particular interest as it provides a detailed analysis of its structure, including aspects such as jurisdiction, competence, the existence of a presumption of validity of the right (fumus boni juris) and imminent danger (periculum in mora), reasons for issuing the order without prior notice to the opposing party (inaudita altera parte), execution procedures, and the applicable law in question.

In particular, the decision pertains to a patent dispute between OERLIKON TEXTILE G.M.B.H. & CO.K.G. (the claimant) and BHAGAT GROUP (the defendant). The decision, dated June 14, 2023, addresses a request for evidence preservation under Articles 192 and subsequent provisions of the Rules of Procedure (RoP).

Here are the key highlights of the decision:

Background: OERLIKON TEXTILE G.M.B.H. & CO.K.G. is the holder of European patent EP2145848B1 for a "False twist texturing machine." During the international textile fair ITMA in Rho, Italy, from June 8 to June 14, 2023, OERLIKON discovered that BHAGAT GROUP was exhibiting a machine that appeared to infringe upon their patent.

Urgency: Given the urgent nature of the case, initial handling was assigned to the standing judge and subsequently transferred to the Milan Local Division for further proceedings.

Jurisdiction and Competence: The UPC had jurisdiction over the case as it concerned a European patent not subject to opt-out, and the request was falling within the UPC's jurisdiction (Article 32, paragraph 1, letter c of the UPCA). The Milan Local Division had territorial competence because the alleged infringement occurred within its jurisdiction.

Future Action: OERLIKON expressed its intention to initiate an ordinary patent infringement action, meeting the conditions set out in Article 192, paragraph 2 of the RoP.

Evidence: The decision evaluated the evidence provided by OERLIKON, including photographs, technical opinions, and other documents indicating a potential patent infringement. The presumption of validity of the enforced patent (granted by the EPO and never subjected to opposition) was also taken into account.

Urgency: The decision established the existence of urgency, considering that the trade fair had been ongoing since June 8, 2023, and was scheduled to end on June 14, 2023. The opposing party was not given prior notice (inaudita altera parte) due to the tight timeline and the risk that the evidence might no longer be accessible after the fair's conclusion.

Payment of Fees: The decision required OERLIKON to pay a fixed fee applicable in urgent cases by June 16, 2023, under Article 371, paragraph 3 of the RoP.

Conclusion and Execution of the Measure: The decision deemed the criterion of proportionality between conflicting interests of the parties involved to be satisfied, with the risk of irreparably losing the right to evidence by the claimant prevailing over the defendant's risk of undergoing the description.

Order for Evidence Preservation: The decision ordered the preservation of evidence, authorizing OERLIKON to proceed with the acquisition of technical and commercial documentation related to the allegedly infringing machine exhibited at ITMA 2023 in Rho Fiera.

Appointment of a Court Expert: The decision appointed a court expert (selected from a list of technical expert consultants in patent matters.) to carry out the evidence preservation, in coordination with OERLIKON and a judicial officer.

Access to Evidence: Information collected by the court expert was to be accessible only to legal representatives of OERLIKON and a technical expert, with a prohibition on disclosure to third parties.

Immediate Execution: The decision was immediately enforceable without further conditions.

No Requirement for Depositing a Financial Security: Remarkably the Judge deemed it unnecessary to condition the immediate effectiveness of the measure on the applicant's prior deposit of a financial security.

Notification: OERLIKON was obligated to notify the respondent of the evidence preservation order, along with a copy of the decision and supporting documents.

Revision Period: The respondent (BHAGAT GROUP) had the right to request a review of the evidence preservation order within thirty days of its execution.

This decision reflects the UPC's assessment of urgency, jurisdiction, competence, and evidence in the case, ultimately granting the request for evidence preservation on a urgent basis. It clearly outlines the execution of the order and safeguards the confidentiality of acquired evidence. It logically substantiates each of the considered points.

In summary, this decision represents a significant step forward in UPC practice and provides a clear insight into the legal processes involved in such cases, contributing to the understanding of intellectual property and patent-related legal dynamics in Europe.


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