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UPC update: Issues of transparency and confidentiality

Posted on 17 April 2024

In this month's UPC update, we report on the Court of Appeal's important decision on whether non-parties should have access to pleadings. The Court's conclusion, that access to such documents should be available following a decision or settlement/withdrawal, and may also be available during the course of proceedings themselves, seeks to draw a line between promoting transparency and open justice, whilst also not allowing unfettered access. We highlight some of the outstanding questions below, and also consider the next transparency-related issue that may need to be resolved by the Court of Appeal, relating to confidentiality during litigation before the UPC and membership of confidentiality clubs.  We also touch on some other recent interesting developments, and report on the latest statistics.

We had anticipated that Ireland would be holding its referendum regarding participation in the UPC/Unitary Patent regime on 7 June 2024, alongside the local and European elections, but on 16 April 2024, the Irish Government confirmed press reports that it would be deferred, in order to allow time for public discourse and engagement.

Number (and locations) of cases

On 2 April 2024, the UPC issued its latest caseload update. There has now been a total of 311 cases brought before the UPC, including 110 infringement actions and 24 revocation actions, as well as 142 counterclaims for revocation. The Munich Local Division continues to lead the way on infringement actions, with the Paris Central Division still receiving the bulk of the revocation actions (news is awaited of the timing of the opening of the Milan seat of the Central Division).

Infringement actions and applications for provisional measures

Local Division

Infringement action

Provisional measures
Munich 43 12
Düsseldorf 24 4
Mannheim 14  
Paris 9  
Hamburg 5 3
Nordic Baltic Regional Division 5  
Milan 3  
The Hague 3 2
Brussels 1  
Helsinki 1 1
Copenhagen 1  
Vienna 1 1

Revocation actions

Central Division Revocation action
Paris 24
Munich 4

Since our March report, the statistics regarding language of proceedings remains stable, with 45% of cases adopting English, 47% adopting German, and around 8% adopting other languages of the UPC (including French, Italian and Dutch).

The Unitary Patent dashboard indicates that, as at 15 April 2024, 23,666 Unitary Patents had been registered. Johnson & Johnson (followed by Siemens, Samsung, Qualcomm and LM Ericsson) continue to lead the way, having registered the most unitary patents. The dashboard shows that the Medical Technology sector leads the way in terms of registering the most unitary patents.

Court of Appeal - access to pleadings

One of the early issues for the UPC Court of Appeal to resolve has been focused on transparency and open justice, with different Local/Regional Division panels giving conflicting decisions in response to applications by non-parties for access to pleadings. Under the UPC Rules of Procedure (R.262.1(b)), written pleadings and evidence "shall be available to the public upon reasoned request to the Registry", with the decision to grant such access being taken after consultation with the parties.

On 10 April 2024, the Court of Appeal dismissed Ocado's appeal against the Nordic-Baltic Regional Division's order giving a member of the public access to its statement of claim in its dispute with Autostore, a case which had been before the UPC but had ultimately settled.

The Court first established that the general principle set out in the UPC Agreement (see e.g., Articles 10(1), 45 and 52) is that the UPC register is public and proceedings (including the written procedure) should be open to the public, unless the balance of interests involved is such that they should be kept confidential.

Balancing these interests involves weighing the interest of the member of the public in accessing the pleadings against the protection of confidential information and personal data, the general interest of justice (including protection of the integrity of proceedings i.e., ensuring that parties are able to bring arguments and evidence free from influence by external parties), and of public order. To enable the Court to effectively weigh these interests, any request for access by a non-party must be sufficiently reasoned. This requires that it specifies the purpose of the request and also explains why access to the specified documents is necessary for that purpose.

The parties had agreed that members of the public have a general interest that written pleadings and evidence are made available to them. The Court noted that such a general interest usually arises after a decision has been passed, as at that point there is a need to understand the decision and to scrutinise the handling of the case. However, it may also arise at other points during the course of the proceedings, and the Court provided guidance on how these interests should be balanced when requests for access are received at different points in proceedings.

For example, the Court noted that the integrity of proceedings would only play a role during the course of proceedings. After a decision has been given, there is no risk of influence by external parties. Accordingly, access should generally be granted if a request is received after proceedings have come to an end by a decision of the court. Similarly, if proceedings come to an end before a decision is rendered (e.g., through settlement or withdrawal), the balance will usually be in favour of granting access to the pleadings, even if there is no decision to be understood. The Court highlighted that in this scenario access may provide insight into the handling of the dispute, or may be beneficial for scientific and/or educational purposes.

The Court may also grant access to pleadings before proceedings have come to an end where an applicant has a 'direct legitimate interest' in the subject matter of the proceedings.  For example, this could be for commercial reasons related to validity, potential infringement, licensing etc. In this situation, the balance would still be generally in favour or granting access to the written pleadings and evidence, but it may be necessary to impose certain obligations e.g., confidentiality obligations.

Applying these general principles to the specific facts, whilst the non-party's request was of a general nature, there was no argument by Ocado that it was contrary to public order, and the proceedings had already concluded by settlement.

Whilst the decision has been welcomed, therefore, it remains to be seen how a court may treat a general request where proceedings are ongoing.

Confidentiality conflicts

It also appears likely that the Court of Appeal will need to resolve conflicting decisions relating to confidentiality during UPC proceedings. Rule 262A of the Rules of Procedure provides that a party may apply to the Court for an order that access to certain information in its pleadings, and certain evidence, be restricted to specific persons. The point of divergence relates to membership of relevant 'confidentiality clubs' and whether it can be limited to parties' legal representatives only, or whether a minimum of one natural person from each party is required.

On 4 March 2024, in Plant-e v Arkyne, the Hague Local Division granted an application where the parties had agreed that, if the application were to be granted, the relevant information would be limited to 'attorneys' eyes only.  The Court confirmed that denying access for at least one natural person of the party was in line with the UPC framework, commenting that "it is possible for the parties to exclude access by a natural person by mutual agreement or by the party concerned forfeiting its right to access by a natural person, provided that fair trial is not affected". 

The Paris Local Division followed this approach in C-Kore Systems Limited v Novawell, where the parties had been invited to submit a list of members of a proposed confidentiality club to examine information gathered following C-Kore's application for a Saisie. Neither party proposed a natural person. On 26 March 2024, the Court ordered that the information be made available to the attorneys' eyes only, referencing the Hague Local Division's 4 March 2024 decision.

However, in 10x Genomics v Curio, the Düsseldorf Local Division noted that the Rule 262A RoP clearly states that the group of persons entitled to access must include at least one natural person from each party. The Court ordered on 23 February 2024 that access be granted to a confidentiality club comprising legal representatives and the applicant’s vice president of Intellectual Property.

In Fujifilm v Kodak, on 27 March 2024, the Düsseldorf Local Division weighed up the right of a party to have unlimited access to documents guaranteeing its fundamental right to be heard against the interest of the opposing party to have its confidential information protected. It firmly noted that Rule 262A RoP requires at least one natural person from each party be granted access to ensure a fair trial. The Court ultimately ordered that access should be granted to the Claimant's legal representatives, three named employees of the Claimant and, later, after the period for appealing the decision, six further named employees. The Court granted Kodak leave to appeal.

This issue seems ripe for resolution by the Court of Appeal if and when it comes before it.  In the UK, the approach taken is that restricting disclosure to external eyes only at any stage is exceptional, and with a staged approach being an appropriate approach (e.g., imposing a wider form of order at an early stage, and relaxing confidentiality restrictions over the course of the proceedings).

Extension of deadlines

On 9 April 2024, the Munich Local Division rejected an application by Meril to extend a deadline for filing its Statement of Defence, confirming the strict approach to timetabling of UPC proceedings.  Meril had submitted that a change to the language of proceedings (from German to English) warranted a three-week extension to the deadline, to ensure a fair trial. However, the Court confirmed that deadlines should not be extended lightly, in view of the principle of ensuring expeditious decisions, and should only be granted in circumstances that justify such an extension.

This follows earlier decisions (UPC_CFI_454/2023 & UPC CFI 412/2023) by the Paris Central Division to reject applications for extensions of deadlines, which they confirmed should be used with caution and only in justified exceptional cases.

Revocation of order to inspect evidence and preserve evidence

On 8 April 2024, the Milan Local Division denied Progress Maschinen & Automation AG's (PMA) application for disclosure of an expert report and revoked all measures granted in an initial order authorising provisional measures to inspect premises and preserve evidence.

PMA had filed two applications against AWM and Schnell to inspect their premises and preserve evidence, alleging infringement of EP 2 726 230. The court granted the orders ex parte in September 2023, with enforcement happening shortly after on 17 October 2023. The evidence gathered by the court appointed experts was lodged on 18 October 2023, along with the expert's official report.

The deadline for PMA to initiate proceedings on the merits expired on 18 December 2023. PMA did not file infringement proceedings and only requested access to the expert report on 16 February 2024.

AMW and Schnell requested that the initial order be revoked. Given that PMA had missed the non-extendable deadline for initiating proceedings, the Court ordered that all measures authorised in the initial order be revoked, and that all evidence gathered during the proceedings be returned to the Defendants. Further, the expert report and bailiff's minutes will be kept in sealed envelopes and archived as records of the proceedings, without any further right of access for the parties.


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