In its decision of 29 June 2026 (UPC_CoA_57/2026), the Court of Appeal of the Unified Patent Court (UPC) has provided further clarification on the key guidelines regarding the disclosure of evidence under Article 59 of the UPCA. The decision provides greater clarity on the distinction between permissible evidence gathering and impermissible ‘fishing expeditions’ – whilst at the same time setting clear limits on unduly broad disclosure orders.
The case concerned patent infringement proceedings before the Copenhagen Local Division. The claimant alleged indirect infringement by the defendant, relying, amongst other things, on marketing documents .
The defendant denied the infringement. A graphic in the marketing documents depicted a contested characteristic in a technically incorrect manner. Against this background, the claimant applied for the production of complete design drawings for all respective installations, the operating and maintenance manuals, and all other documents provided to customers. The Copenhagen Local Chamber granted this application in full.
The Court of Appeal first confirmed the fundamental purpose of Article 59 of the UPCA and Rule 190 of the Rules of Procedure: Granting access to evidence held by the opposing party is intended to compensate for structural information gaps in patent proceedings and to ensure effective legal protection.
It is sufficient for the applicant to provide plausible indications of infringement; full proof is not required. The Court considered the inaccurate illustration in the defendant’s marketing materials to be sufficient for this purpose. At the same time, it makes it clear that disclosure is not a general discovery tool, but must be specific, necessary and proportionate.
Applying these criteria, the Court of Appeal significantly reduced the scope of the disclosure ordered. The Local Division had, amongst other things, ordered the production of complete design drawings for all installations, including those at other sites, and ‘other documents’ relating thereto. The Court of Appeal deemed this disproportionate: there was no sufficient link to the specific features at issue, no justification as to why facilities at other sites should be relevant, and no consideration of less intrusive measures.
Only what is ‘strictly necessary’ is required. The Court of Appeal makes it clear: measures to obtain evidence must relate only to what is necessary for the resolution of the dispute. Blanket or open-ended categories (e.g. ‘other materials’) are inadmissible.
A distinction must be made according to specific technical points of dispute. Remarkably, the Court of Appeal has not (yet) explored this point in greater depth in the present decision. Although it has limited the scope of the first-instance order to the construction drawings of one plant, it has not restricted it to specific construction drawings or to construction drawings of specific plant components. This is despite the fact that it has clarified that Rule 190 of the Rules of Procedure (RoP) requires a concrete link between the measure sought and the facts to which the applicant refers. The UPC system does not provide for general disclosure or discovery, but only for targeted and justified access to specific evidence (“R. 190 RoP does not permit fishing expeditions but requires a concrete link between the requested measure and the facts relied upon by the requesting party. This reflects the structured nature of the UPC system, which does not provide for general disclosure or discovery, but only for targeted and justified access to specific evidence.”
It remains to be seen whether future case law will further tighten the requirements on the applicant and their submissions or leave them as generous as they are now.
Finally, the Court of Appeal makes it clear that the prohibition on self-incrimination applies only within narrow limits, because otherwise Article 59 of the UPCA and Rule 190 of the Rules of Procedure would lose “much of their practical effect”. Interestingly, the Court of Appeal examined this consideration only in relation to public law sanctions and did not address the allocation of the burden of proof: to what extent does an obligation to produce evidence amount to self-incrimination within the meaning of Article 59 of the UPCA?
In summary, it should therefore be noted that an applicant seeking an order to produce evidence must present plausible grounds for an infringement, but not full proof. At the same time, the order to produce evidence must not constitute a ‘fishing expedition’, but must be specific, necessary and proportionate:
- Measures may only be taken on the basis of well-founded and specific allegations and must not be of an exploratory or speculative nature. The Rules of Procedure require a specific link between the measure sought and the facts on which the applicant relies.
- The evidence must be necessary.
- The measure must be proportionate in two respects: the evidence sought must not reasonably be available to the applicant through less intrusive measures, and the burden on the party subject to the order must be justified in the light of the interests involved (balancing of interests).