Evidence preservation doesn’t stretch to interrogation

Background

Essity Hygiene and Health AB ("Essity"), proprietor of EP 3 289 139 concerning tissue paper comprising pulp fibres originating from Miscanthus, obtained an ex parte order of 17 April 2026¹ from the Hague Local Division for the preservation of evidence and inspection of premises against WEPA Nederland B.V. ("WEPA"). The order was executed at WEPA's premises on 21 April 2026 and subsequently confirmed by the Local Division on review².

The impugned preservation order authorised the collection of physical and digital material relating to WEPA's allegedly infringing activities, including commercial and promotional documents. It also permitted direct questions to be put to WEPA's personnel about whether the teachings of the patent were implemented in its products and processes, while stating that, under Dutch law, personnel were not obliged to answer on pain of penalty.

On appeal, WEPA challenged the use of the ex parte procedure and the breadth of the evidence covered by the measure. It objected in particular to the questioning of its personnel, relied on challenges to the validity of the patent and asserted a prior-use right under Art. 28 UPCA. Its objection to the inclusion of promotional and commercial documents, its prior-use argument and its request for compensation had not been raised in the review proceedings before the Local Division.

Principles

Under Art. 60 UPCA, the UPC may, even before proceedings on the merits have commenced, order prompt and effective provisional measures to preserve relevant evidence in respect of an alleged infringement. Art. 60(2) provides that such measures may include a detailed description, with or without the taking of samples, or physical seizure of the allegedly infringing products and, where appropriate, materials and implements used in their production or distribution and related documents.

Under Art. 60(5) UPCA and R. 197.1 RoP, such measures may be ordered, if necessary, without the other party having been heard, in particular where any delay is likely to cause irreparable harm to the proprietor or where there is a demonstrable risk of evidence being destroyed. In exercising its discretion to proceed without hearing the defendant, the Court takes into account the urgency of the action, whether the reasons for not hearing the defendant appear well-founded, and the probability that evidence may be destroyed or otherwise cease to be available (R. 194.2 RoP).

R. 196.1 RoP specifies the measures which may be ordered for preservation of evidence, while the UPCA provides separate mechanisms for taking evidence, including hearing witnesses, under the Court's control (Art. 53 UPCA). Under Art. 28 UPCA, a person who would have had a prior-use right under national law in a Contracting Member State enjoys the same rights in respect of a patent for that State. Under Art. 73(4) UPCA and R. 222.2 RoP, requests, facts and evidence not submitted before the Court of First Instance may be disregarded on appeal.

Conclusion

The Court of Appeal held that a demonstrable risk that evidence may be destroyed or otherwise cease to be available can in itself justify an ex parte preservation order under Art. 60 UPCA, and confirmed that urgency is not a requirement for an order to preserve evidence. The ease with which the relevant digital documentation, samples and production materials could be removed, destroyed or transferred to other group entities was sufficient in this case.

WEPA's objection to the inclusion of promotional and commercial documents was disregarded under Art. 73(4) UPCA and R. 222.2 RoP because it had not been raised in the review proceedings at first instance. The Court nonetheless held that it would have failed in any event: preservation under Art. 60 UPCA is not confined to technical documentation. Relevant promotional and commercial documents may be included in a preservation order where they contain evidence of the alleged acts of infringement.

However, the Court drew a limit to the scope of an inspection: Art. 60 UPCA does not empower the Court to allow a bailiff or expert to question the defendant's personnel on technical details of the defendant's products or production processes. Even where obtaining statements from personnel is necessary for preserving evidence, this must take place under the Court's control (cf. Art. 53 UPCA). The statement that personnel were not obliged to answer under Dutch law did not cure the defect, since personnel could reasonably have believed that they were obliged to answer questions put by a bailiff acting on the Court's express authorisation. This does not prevent the Court from ordering the defendant to require its personnel to provide practical information necessary for execution of the measure, such as passwords needed to access digital data.

The Court also confirmed that it is not required to assess validity when deciding an application to preserve evidence, although it may take into account a presumption of validity that has clearly been called into question, for example by a decision of an opposition division of the EPO. Here, the opposition division had maintained the patent as granted. WEPA's prior-use argument was disregarded as new on appeal, but would in any event have failed: an asserted Art. 28 UPCA prior-use right should ordinarily be determined in the infringement action, and preservation should be refused on that basis only where summary examination makes it clear that the infringement action has no prospect of succeeding because of the prior-use right. That threshold was not met here, not least because WEPA had not set out the relevant national law.

Accordingly, the appeal succeeded only as regards the questioning of WEPA's personnel. Essity was ordered to instruct the technical expert, the bailiff and its representatives to destroy all copies of the original expert report, and the expert was to submit, within two weeks, a redrafted version excluding the answers of personnel to substantive questions and any findings relying exclusively on those answers; independently supported findings could remain. WEPA's request for compensation was declared inadmissible, the remainder of the appeal was rejected, and the parties were ordered to bear their own costs.