A comparative analysis of Belgian and Unified Patent Court seizure measures

Encouraging many lawyers and European patent attorneys to consider enhancing their expertise and qualifications in judicial actions, it is noteworthy that the UPC has received more than 580 cases since its launch on June 1, 2023. Among these, two infringement actions were filed with the Brussels Local Division in illustration of its role within the UPC system, with the very first hearing of either of these actions taking place on December 6, 2024.

For context, in 2023, Belgian courts managed more than 100 cases related to counterfeit seizures across all types of IP, and 25 new cases were registered in the country by the year's end. These figures reflect the continued relevance of national courts in handling IP disputes alongside the growing role of the UPC.

With approximately 10,000 professional representatives currently registered with the UPC, the Court is expected to become the leading forum for patent enforcement. However, its creation has also rekindled debate surrounding forum shopping in litigation, and various indicators suggest that national courts will continue to play a significant role.

Thus, it is necessary to compare proceedings before national courts with the options made available by the UPC's centralized framework. In the following analysis, we will focus on specific legal procedures well-known in Belgium, the Netherlands and France: seizure measures. Our aim is to highlight the respective advantages and disadvantages of national and UPC approaches, emphasizing the need for a deliberate choice of the appropriate forum before initiating legal action.

Jurisdictional dynamics between the UPC and national courts during the transitional period

Under Article 32(1) of the Agreement on a Unified Patent Court (UPCA), the UPC has exclusive competence in respect of actions concerning European Patents with unitary effect (Unitary Patents) and related rights, as well as decisions of the European Patent Office under Regulation (EU) 1257/2012. However, during the transitional period established by Article 83(1) UPCA, lasting until May 31, 2030, and potentially extendable under paragraph five until May 31, 2037, national courts retain competence over infringement and revocation actions for European Patents and supplementary protection certificates (SPCs) unless explicitly brought under UPC jurisdiction. 

Additionally, patents that have been opted out under Article 83(3) UPCA remain entirely within the jurisdiction of national courts. This division ensures that non-unitary European Patents validated in countries outside the UPC system are exclusively governed by the courts of those states, as the UPC's jurisdiction is limited to its Contracting Member States.

For instance, in Belgium, the Brussels Enterprise Court retains exclusive jurisdiction over matters involving Belgian patents and the Belgian part of European Patents. This includes actions related to licenses, ownership claims of any national patent (application) and contractual disputes. Decisions involving prima facie validity in summary proceedings and descriptive seizures – a distinct feature of Belgian, French and Dutch practice – remain a national competence. The Belgian pharmaceutical and biotech sectors remain key drivers of infringement litigation in the country, as evidenced in the annual reports of Operation SHIELD, an international enforcement effort to disrupt counterfeit medicine trafficking.

National courts will continue to handle cases outside the UPC's exclusive jurisdiction, such as licensing agreements, assignments and co-ownership disputes, unless the parties specifically opt for the UPC. Claims related to unjustified threats of infringement proceedings and actions involving SPCs linked to opted-out European Patents also remain under national courts' jurisdiction. For European Patents validated in countries outside the UPC structure, jurisdiction lies solely with the respective national courts, highlighting the complexity of the dual-system context during the transitional period.

Seizure measures in Belgium and at the UPC: a comparison

In Belgium, seizure measures (commonly referred to in French as saisies-contrefaçon or in Dutch as beslagen inzake namaak) are unilateral actions encompassing both descriptive seizures (saisies-descriptive) and preservation measures (mesures conservatoires) that allow a court-appointed expert to gather and conserve evidence of patent infringement. Notably, Belgian case law permits the descriptive procedure to be used by holders of foreign IP rights, such as a French patent, if the alleged infringement involves activities on Belgian territory. Foreign IP rights may be invoked when the products or processes at issue pertain to manufacturing, export or other activities connected to Belgium, provided the court deems there is a legitimate interest in preventing harm or collecting evidence.

The process typically begins with an ex parte request, meaning the alleged infringer is not notified beforehand, ensuring a "surprise effect." A prima facie valid patent and evidence suggesting (potential) infringement are required for such a petition to be granted (Article 1369bis/1 of the Belgian Judicial Code). If the plaintiff's request is approved, the president of the competent court appoints one or more experts to inspect all relevant elements, such as documents, products or processes that may establish the alleged infringement, including its origin, scope and destination. The appointed expert then prepares a detailed report of their findings, providing concrete evidence to substantiate potential infringement claims in subsequent legal proceedings.

Meanwhile, the UPC also allows for evidence preservation and premises inspection (Article 60 UPCA). However, ex parte UPC measures are explicitly permitted only "if necessary," particularly whenever delays could risk the destruction of evidence or cause irreparable harm to the patent holder.

Unlike Belgian procedures, the UPC framework also includes inter partes options for the Court to notify the defendant and potentially revoke the applicant's (plaintiff's) request, offering greater procedural flexibility. Additionally, the UPC requires reasonably available evidence of both the patent's validity and the likelihood of infringement, with a strong emphasis on proportionality and balancing interests, especially for ex parte actions. This commensuration requirement is less emphasized in Belgium for descriptive measures, where the focus is more on the straightforward collection of evidence.

Thus, it may be seen that while Belgian seizure procedures and the UPC's evidence preservation mechanisms share similarities, they diverge in several aspects. As touched upon, these include their approach to proportionality and defendant notification but also extend to evidentiary requirements.

• Evidentiary requirements: The UPC demands reasonably available evidence of patent validity and potential infringement, with explicit proportionality requirements to safeguard defendants' interests. In contrast, Belgian descriptive measures require only a prima facie valid patent and indications of potential infringement, with minimal emphasis on proportionality.
• Scope: Belgian descriptive measures focus on documenting alleged infringements, while seizure measures may target infringing goods but exclude generalized variants. The UPC framework is broader (Article 60(1-3) UPCA), allowing for the seizure of goods, associated materials and digital data as well as for premises inspections.
• Timely follow-up proceedings: Before the UPC (Article 60(8) UPCA), follow-up actions must begin within a legally prescribed period (20 working days or 31 calendar days, whichever is the longer) with failure resulting in the revocation of evidentiary measures and potential compensation for the defendant. In Belgium, proceedings must begin within 21 working days or 31 calendar days, whichever is the longer, or the order is automatically nullified.

In summary, strategic implications may contribute to the differing strengths of each framework. Countries where seizure measures are prevalent, such as Belgium, provide quick, unilateral tools for evidence collection, particularly in localized disputes, with specific safeguards under national law. In contrast, UPC procedures, with their harmonized and structured rules, place a stronger emphasis on proportionality and procedural flexibility, reflecting the Court's broader international scope. These enhanced guardrails, including proportionality assessments and protective letters, make the UPC better suited for cross-border disputes or complex cases requiring a balanced approach between the protection of patent rights and the interests of alleged infringers.

Conclusion

When deciding whether to pursue a local action in Belgium or before the UPC, plaintiffs should consider various factors, including procedural speed, cost and the geographical scope of enforcement.

In Belgium, the saisie-contrefaçon procedure, which includes descriptive measures possibly followed by seizure measures, can be tailored to the specific nature of the infringement, enabling strict confidentiality, e.g., through the creation of confidentiality circles ("clubs"). On the other hand, the UPC framework provides broader jurisdictional reach across multiple member states, which is advantageous for cases involving cross-border infringement. While ex parte is the rule in Belgium, Article 60 of the UPCA allows both ex parte and inter partes proceedings, depending on the case specifics. Furthermore, the UPC imposes mandatory security "for the legal costs and other expenses and compensation for any injury incurred or likely to be incurred" in ex parte measures (Rule of Procedure 196(6)), which is not a requirement in Belgium, potentially making Belgian procedures more accessible and cost-efficient for localized infringement cases.

In addition, the UPC also allows for substantial penalties for non-compliance with evidence preservation orders, including recurring fines (Article 82 UPCA), acting as a strong deterrent against defendants attempting to obstruct the process. The focus of UPC measures is more on conserving information rather than immediate seizure, which may be advantageous for cases where maintaining the integrity of evidence is critical but, conversely, could delay relief for plaintiffs seeking urgent remedies.

Besides ascertaining the most promising location for gathering evidence or conducting an on-site inspection, the choice between Belgian seizure measures and requesting a UPCA evidence preservation order largely depends on the plaintiff's specific needs, particularly regarding speed, expense and jurisdictional reach.