The Brussels Local Division (LD) provided noteworthy guidance on how the Unified Patent Court (UPC) approaches applications to produce evidence under Rule 190 of the Rules of Procedure (RoP). The order was issued in the infringement action UPC_CFI_1357/2025 and related revocation proceedings UPC_CFI_629/2026.
The dispute concerns EP 3 107 487 B1, owned by Establishment Labs S.A. The defendants (GC Aesthetics group entities and Romed N.V. – “GC Aesthetics”) filed a statement of defence including a counterclaim for revocation. In the counterclaim, GC Aesthetics relied on Establishment Labs’ own product as alleged prior use that must be tested to conclusively prove a lack of novelty and/or inventive step. GC Aesthetics therefor sought production of samples and technical, regulatory and commercial documents that were largely in the patent proprietor’s possession.
The Local Division framed the evidence production request around four cumulative requirements:
- The requesting party must have put forward reasonably available evidence supporting its case. The assessment of this condition is prima facie and twofold:
a. Did the requesting party present reasonable available evidence to support its underlying assertions?
b. As an implied condition, could the requested evidence enable the requesting party to conclusively prove its assertions? - The requested evidence must be specified and lie in control of the other party.
- Confidentiality must be protected.
- The order must be proportionate, equitable and fair. This assessment is twofold:
a. The timing of the application as such taking into consideration the state of the proceedings
b. Each individual request as a final assessment.
In the present case, Establishment Labs argued that the request was “premature” and should wait until later in the written procedure. The LD rejected that objection. Neither the No. 2004/48 Enforcement Directive, the UPCA nor the Rules of Procedure impose such a timing restriction, and procedural efficiency weighed in favour of dealing with the request promptly, particularly because physical samples might need testing within the UPC’s ambitious timetable.
Further, confidentiality did not prevent the evidence production. The LD held that simply labelling documents as confidential or internal is not enough to defeat a Rule 190 request. Instead, the UPC framework allows relevant confidential information to be produced under safeguards, including a confidentiality regime under Rule 262A RoP and access limited to named persons.
Proportionality was addressed in a practical way. If Establishment Labs produced the pre-priority samples and admitted that the relevant product had been publicly available before the priority date, the remaining requests would become disproportionate and need not be complied with. If it did not make that admission however, or if it could not produce the samples and relied on witness statements instead, the remaining documentary requests would still have to be satisfied.
The decision is accordingly a useful reminder that, before the UPC, a patent proprietor cannot necessarily resist evidence production merely because the requested material is internal, confidential or relevant to its own product. Where a defendant has made a prima facie case based on reasonably available evidence and has specified material controlled by the proprietor, the UPC may order production, while using confidentiality protections and proportionality mechanisms to manage the burden.
