Progress v AWM & Schnell (UPC_CoA_177/2024)
Decision date:
23 July 2024
Osborne Clarke summary
- In this case, Progress filed an application for preserving evidence and application for an inspection against AWM and Schnell in the Milan LD. The Milan LD granted both of the applications. Progress filed a request to access the expert reports after the measures had been carried out, which AWM and Schnell resisted. The Milan LD denied Progress access to the reports on the grounds of inadmissibility, as the request was made nearly four months after the measures were carried out. It also revoked the measures and ordered restitution of the evidence to AWM and Schnell. Progress appealed.
- The Court of Appeal confirmed that an application for the preservation of evidence or inspection of premises within the meaning of Article 60 UPCA and Rule 192 RoP et seq. implies a request to disclose the outcome of the measures to the applicant, including the report written by the person who carried them out. This follows from the fact that the legitimate purpose of the measures is the use of the evidence in proceedings on the merits, which includes use of the evidence to decide whether to initiate the case and to decide whether and to what extent the evidence will be submitted in the proceedings.
- However, this does not mean that there is an unconditional order to disclose evidence to the applicant. Under Article 60(1) UPCA, the order must be subject to the protection of confidential information. Where the evidence may contain confidential information, the court must hear the other party before deciding whether and to what extent to disclose. The court must give the other party access to the evidence and provide them with the opportunity to request protection of confidential information.
- Pursuant to Article 60(8) UPCA, the court must ensure that measures to preserve evidence or to inspect premises are revoked or cease to have effect, at the defendant's request, if the applicant does not bring an action on the merits within a period not exceeding 31 calendar days or 20 working days (whichever is longer). Rules 198.1 and .2 RoP specify that the time period for commencing an action on the merits under Article 60(8) runs from the date specified in the court's order, taking into account the date when the report on the measures is to be given to the applicant. Therefore, the Court of Appeal states that, as a general principle, the court must specify in its order when the time period starts to run.
- In this case, the Court of Appeal set aside the Milan LD's decision to revoke the measures and dismissal of Progress' application for disclosure and the restitution that was based on the revocation of the measures. The Court of Appeal referred the case back to the Milan LD to reconsider Progress' request to make the reports of the expert who carried out the measures available to its representatives. This was the case because the merits of Progress' request and any potential confidentiality issues had not been discussed between the parties. The Milan LD was therefore instructed to address Progress' request in accordance with the principles set out in this decision, including giving AWM and Schnell access to the report to assess confidentiality.
Issue
Curious about how UPC decisions might impact your business? Have questions about the UPC?
Reach out to our patents team for expert guidance and support.