Summary of Confidentiality Orders granted by the UPC

One of the objectives of the Unified Patent Court (UPC) is to ensure that proceedings are dealt with in a fair and equitable manner and do not distort competition between parties. To achieve this objective, the Court has implemented robust confidentiality measures designed to safeguard commercially sensitive information.  The legal framework for these measures is primarily established by Article 58 of the UPC Agreement (UPCA), which grants the Court the authority to restrict or prohibit the collection and use of evidence in proceedings, as well as to limit access to such evidence to specific individuals. Parties can then apply for a confidentiality order under Rule 262A of the Rules of Procedure, which broadens the scope of such confidentiality orders to include information contained in a party’s pleadings or exhibits.

It is unsurprising that requests for confidentiality orders to be granted are relatively common. As a consequence, trends in how these provisions are implemented by the UPC have already started to emerge. In the following we highlight the approaches taken by a number of divisions, and identify aspects where first instance divisions appear to diverge.

Definition of confidential information

Article 2(1) of the EU Directive 2016/943 on the protection of undisclosed know-how and business information (trade secrets) (herein “the Directive”) defines a trade secret as information which is not generally known, has commercial value because it is secret, and has been subject to reasonable steps to keep it secret. 

However, for a R262A application to be granted, the existence of a trade secret does not have to be established to the Court's satisfaction, but only to the extent that it is “predominantly probable” that the information will satisfy the necessary standard (UPC_CFI_54/2023, 03/11/2023, Hamburg LD). This is based on Article 9(1) and 9(2)(a) of the Directive, which provides that, in judicial proceedings, access to documents containing trade secrets or alleged trade secrets submitted by the parties or third parties may, on request, be restricted in whole or in part to a limited number of persons (emphasis added). 

Furthermore, Article 58 UPCA extends beyond the mere protection of trade secrets and provides measures "for the protection of trade secrets, personal data or other confidential information of a party to the proceedings". Thus, the Courts have established confidentiality regimes for information ranging from technical details of a product (UPC_CFI_54/2023), companies’ financial records (UPC_CFI_239/2023), non-public licensing agreements (UPC_CFI_164/2024) and sales information (UPC_CFI_230/2023).

Persons given access under the R262A order

Rule 262A.5 states that the court may grant an application to protect previously undisclosed information if the applicant's reasons significantly outweigh the other party's right to full access. In other words, the court will normally not allow a submission to enter proceedings without granting access to at least some persons of the other party. In the event of an unsuccessful or partially successful R262A decision, the Court can give the applicant the opportunity to withdraw the submission before such access is granted, so that the submission is then not considered to be part of proceedings. For example, in UPC_CFI_240/2023, a R262A order regarding, inter alia, a licence agreement between the claimant and a third party was requested. The Milan Local Division gave the claimant a choice between including the documents in the action, thus providing access to a confidentiality club including a natural person from the defendant, or excluding the documents from the action entirely. As a result, the claimant chose to withdraw the documents (see also UPC_CFI_210/2023, UPC_CFI_471/2023).

Following R262A.6, the confidentiality regime normally allows the other party’s representatives as well as a minimum number of natural persons from the other party to access the information in question. This said, in March 2024, The Hague Local Division appeared to diverge from the practice of other UPC divisions and instead, in UPC_CFI_239/2023, followed the approach of the Dutch national courts to restrict access to “Attorney Eyes Only” (previously reported here). This view does not seem to be shared outside The Hague Division, with subsequent decisions from other divisions providing access to at least some members of the other party (see e.g., UPC_CFI_201/2024).  Secondly, in the interests of proportionality and flexibility, the Courts have upheld any agreements between parties to mutually prohibit access to the confidential information beyond attorneys’ eyes (Paris LD UPC_CFI_397/2023, Milan LD UPC_CFI_241/2023).

The Courts have stated that the group of persons admitted to these “confidentiality clubs” must always be examined on a case-by-case basis, and must be adapted to the requirements of the respective proceedings. In earlier cases, access was given to three natural persons of the party beyond the legal representatives (Hamburg LD UPC_CFI_54/2023 03/11/2023, Munich Central Division UPC_CFI_80/2023 17/11/2023). However, in UPC_CFI_355/2023 27/03/2024, the Dusseldorf Local Division found that, because the information in question was “historic” and related to a product that was no longer on the market, providing access to only three employees of the party would be a disproportionate burden which could prejudice the right of the parties to a swift procedure. Thus, access was granted to six employees.

Increasingly, the Courts are also showing similar flexibility when deciding the number of representatives to be given access. In UPC_CFI_463/2023, the Dusseldorf Local Division decided that, taking into account the special features of the proceedings, a provisional restriction to four legal representatives, two patent attorneys and three representatives of the client was appropriate as a rule, whereby this group of persons could be expanded by two paralegals if necessary. Recently, however, the Court has balanced these restrictions with the right of the party to effective legal remedy and exercising of rights, which includes the right to determine the identity and number of representatives who are to handle the case (Mannheim LD UPC_CFI_471/2023 03/07/2024). Thus, the Courts have granted these representatives the right to share the relevant information with their teams, actively involved in the proceedings, including other attorneys-at-law, patent attorneys and support staff (Dusseldorf LD UPC_CFI_347/2024 21/08/2024). This arrangement is accompanied with the liability on the listed representatives as being ultimately responsible for their teams breaching the confidentiality order. 

Access for representatives in parallel cases

Generally, a R262A order requires that the information in question must be treated as strictly confidential and may not be used or disclosed outside the present legal dispute, even after its conclusion. However, in some cases, the Courts have allowed the information to be shared with representatives working on parallel cases before other divisions of the UPC or in other jurisdictions.

In UPC_CFI_220/2023 (04/07/2024), the Munich Local Division clarified that the definition of the authorised representatives given access to the confidential information under the R262A application also included representatives acting in parallel proceedings involving the same parties before the UPC as well as before the German and English National Courts. However, this is in direct contrast to the practice of the Mannheim Local Division, which has granted access for representatives in parallel UPC proceedings involving the same parties, but has repeatedly denied access to representatives in national court proceedings (UPC_CFI_219/2023, UPC_CFI_210/2023, UPC_CFI_471/2023). The approach of the Mannheim LD is that broader sharing with representatives in other jurisdictions would not maintain the confidentiality regime’s integrity, and the balance of interest in this aspect weighs in favour of the party requesting the confidentiality order. The division held that, even if the other party had a representative common to the UPC and external proceedings, this representative would not be permitted to use the confidential information for the purposes of the external proceedings. This was because the proceedings concern different territories, can be conducted independently of each other, and the other party would not have knowledge of the information were it not for the UPC proceedings (UPC_CFI_471/2023).

Extensions of Time

Another overarching objective of the UPC is to ensure swift access to justice alongside the avoidance of unnecessary delays. In accordance with this principle, the courts will not normally grant an extension of time merely on the basis of a confidentiality regime being put in place (UPC_CFI_463/2023, Dusseldorf LD).

While limiting access to certain information in a document is not inherently a cause to extend a deadline, the courts appear to be more amenable in cases where the party can demonstrate that the restricted access affected their ability to act before the court. For example, the Hamburg LD set the deadline for replying to the statement of defence based on the date that the claimant’s received the unredacted version of the statement, as it was held that the redacted information was an integral part of the statement of defence (UPC_CFI_54/2023 28/11/2023).

Conversely, the Mannheim LD did not grant an extension of time for a reply to the defendant on the basis of a previous redacted reply made by the claimant (UPC_CFI_219/2023 13/06/2024). The court reasoned that the relevant technical aspects of the claimant’s reply did not contain any redactions, and thus the redacted version of the claimant’s reply did not affect the defendant’s ability to prepare a response. More recently, however, the Munich Local Division held that the time limit for filing a reply can only run from the date on which the party have been served with a fully unredacted reply (UPC_CFI_220/2023 04/07/2024). The division held the view that the party has a right to full knowledge of all of the other party’s submissions when filing the reply  Thus, the Munich Local Division appears to diverge from the Hamburg and Mannheim Local Divisions which considered the relevance of the redacted information to the reply for which an extension was sought.

In conclusion, the UPC has demonstrated a strong commitment to fairness and competitive balance through its implementation of robust confidentiality measures in patent litigation proceedings. The widespread use of confidentiality orders under Rule 262A, which protect a broad range of sensitive information beyond just trade secrets, underscores this commitment. It has been encouraging to also see the UPC consistently prioritising swift access to justice while adapting its approach to confidentiality on a case-by-case basis. As the UPC system continues to mature, it is likely that more uniform practices will develop across divisions and we look forward to seeing how this progresses. Such practices will also need to be assessed alongside another fundamental issue that the Courts are grappling with concerning third party access to UPC cases and pleadings – that is not the subject of this note – but we anticipate that further guidance will be needed on that separate but interlinked issue of protecting parties’ confidential information and pleadings whilst operating a transparent Court system.