The Unified Patent Court (UPC) was designed to provide patentees with an efficient, centralised enforcement forum. Yet recent case law demonstrates that this efficiency cuts both ways. In particular, Rule 190 of the UPC Rules of Procedure (“RoP”), governing applications to produce evidence, creates a real risk that an infringement action may backfire—especially where the defendant advances a credible prior‑use attack based on the claimant’s own products.
That risk crystallised in the Brussels Local Division’s procedural order of 14 April 2026 in Establishment Labs S.A. v GC Aesthetics, where an infringement claim opened the door to extensive disclosure of samples and confidential technical, regulatory and commercial documentation. The decision provides an important warning: bringing an infringement action at the UPC may force the patentee to hand the defendant the very evidence needed to destroy the patent.
UPC proceedings are deliberately front‑loaded. Statements of claim, defences, counterclaims for revocation and supporting evidence are all exchanged early. Within this architecture, Rule 190 RoP implements Article 59 UPCA and Article 6 of the Enforcement Directive, empowering the Court to order production of evidence that lies in the control of the opposing party.
Unlike traditional continental European systems—particularly German patent litigation—UPC disclosure is court‑driven, early, and potentially broad, subject only to proportionality and confidentiality safeguards rather than structural limits. This makes Rule 190 strategically potent, especially in validity disputes.
The Brussels case arose from a patentee‑initiated infringement action relating to EP 3 107 487 B1, a patent covering soft‑tissue body implants. The defendants (GC Aesthetics and related entities) responded with a counterclaim for revocation, relying inter alia on alleged public prior use of the patentee’s own breast implant product before the patent’s priority date.
Critically, the defendants argued that decisive evidence of that prior use—samples, design files, validation material and regulatory submissions—lay entirely within the claimant’s control. On that basis, they applied for an order under Rule 190 RoP requiring production of extensive materials, including physical implant samples.
The Brussels Local Division reaffirmed that applications to produce evidence are assessed against four cumulative conditions, building on earlier UPC case law:
1. Reasonably available evidence must already have been put forward in support of the applicant’s case (assessed on a prima facie basis);
2. The evidence sought must be sufficiently specified and lie within the control of the opposing party;
3. Confidentiality of sensitive information must be protected (not used as a bar to disclosure);
4. The request must satisfy proportionality, equity and fairness, considering both timing and scope.
Importantly, the Court emphasised that Rule 190 is not exceptional and does not require the applicant to exhaust other evidentiary avenues first. To impose such a requirement would create circularity precisely in cases where decisive evidence is asymmetrically held by the other side.
A central feature of the claimant’s resistance was the argument that disclosure was premature, as the written procedure in the infringement and revocation proceedings had not yet concluded.
The Court rejected this outright. Where the alleged prior use is clearly identified, disputed, and potentially decisive, an early production order may actively serve procedural efficiency, allowing the case to progress on an informed footing. In UPC litigation, timing objections alone will rarely defeat a well‑founded Rule 190 application.
The claimant also relied heavily on the sensitive nature of the requested materials, which included internal technical documentation and regulatory filings.
The Brussels Local Division took a clear stance: confidentiality is a condition to be managed, not a reason to refuse disclosure. The Court pointed to the availability of confidentiality regimes under Rule 262A RoP and structured the order accordingly. For patentees, this underscores that commercial sensitivity will usually mitigate how disclosure occurs, not whether it occurs.
What makes this decision particularly significant is its strategic dimension. The claimant’s own infringement action effectively:
In other words, the act of enforcement triggered a disclosure obligation that may ultimately undermine the patent itself.
This is not an anomaly but a foreseeable consequence of the UPC’s procedural design. Where a patent owner has commercialised products before the priority date—especially in regulated sectors such as medical devices, pharmaceuticals or telecoms—those products and associated documentation may become powerful weapons in the hands of an alleged infringer once Rule 190 is engaged.
From a comparative perspective, the contrast with German practice is stark. German law offers limited inspection and information claims (for example under § 140c PatG), typically directed at proving infringement rather than invalidity, and seldom reaching deep into internal technical and regulatory files at an early stage.
By contrast, the UPC enables early, court‑ordered access to internal materials relevant to validity, reshaping enforcement risk assessments across Europe.
The Brussels decision offers several clear takeaways:
1. Pre‑litigation audits matter
Patentees should critically assess whether their own prior products or disclosures could surface in a Rule 190 scenario—and whether the supporting documentation withstands scrutiny.
2. Infringement strategy must integrate validity risk
UPC enforcement cannot be planned in isolation from potential revocation exposure; disclosure risk is now a central strategic variable.
3. Prior use is a powerful defence at the UPC
Where plausible, it can unlock invasive disclosure that national courts would never permit.
4. Confidentiality expectations must be realistic
Protective orders manage risk; they do not neutralise it.
The UPC promises powerful enforcement tools—but they come with equally powerful counterbalances. The Brussels Local Division’s Rule 190 order in Establishment Labs v GC Aesthetics illustrates a hard truth of UPC litigation: an infringement action can create the procedural gateway for one’s own patent to be dismantled.
For patentees, the message is clear. In the UPC era, enforcement is no longer just about proving infringement—it is about surviving disclosure.
Author
posted 4 hours ago
posted 4 hours ago
posted 7 hours ago
posted 7 hours ago
posted 1 day ago
posted 1 day ago
posted 1 day ago
posted 1 day ago
posted 1 day ago
posted 1 day ago
posted 1 day ago
Find the right Legal Expert for your business
Sign up for the latest legal briefings and news within Global Law Experts’ community, as well as a whole host of features, editorial and conference updates direct to your email inbox.
Naturally you can unsubscribe at any time.
Global Law Experts is dedicated to providing exceptional legal services to clients around the world. With a vast network of highly skilled and experienced lawyers, we are committed to delivering innovative and tailored solutions to meet the diverse needs of our clients in various jurisdictions.
Global Law Experts is dedicated to providing exceptional legal services to clients around the world. With a vast network of highly skilled and experienced lawyers, we are committed to delivering innovative and tailored solutions to meet the diverse needs of our clients in various jurisdictions.
Send welcome message
