Opinions
Safeguarding confidential information before the Unified Patent Court: recent case-law insights from the Milan Local Division.
The safeguarding of confidential information throughout legal proceedings is of paramount importance, particularly within the newly instituted Unified Patent Court.
This Court holds jurisdiction over invalidity and infringement cases related to European Patents, including both traditional European Patents not opted out of the system and those with unitary effect. The Court applies a blend of international agreements and EU regulations, operating through a network of central divisions in Paris, Munich, and Milan, supplemented by local and regional divisions across the participating States.
Recent judgements highlight the necessity of balancing confidentiality with transparency and ensuring the right to a fair trial.
Relevant provisions
The protection of confidential information during litigation before the Unified Patent Court (“UPC”) is provided for by Article 58 of the Unified Patent Court Agreement (“UPCA”) and implemented in Rule 262A of the Rules of Procedure (“RoP”).
These provisions aim to protect the trade secrets, personal data, or other confidential information and to prevent an abuse of evidence during UPC proceedings. To request protection for sensitive documents, parties must submit an application to the Court, providing both full and redacted versions, explaining the need for confidentiality. The Court then evaluates the written submissions from the other parties, weighing the need for confidentiality against the importance of transparency. Access to these documents may be limited or granted only to certain individuals, to ensure a fair trial.
According to Rule 262A.6 RoP the number of persons having access to such documents should be no greater than necessary in order to ensure compliance with the right of the parties to the legal proceedings to an effective remedy and to a fair trial, and should include, at least, one natural person from each party and the respective lawyers or other representatives of those parties to the legal proceedings.
The Düsseldorf Local Division (here the link to the decision) has noted that Rule 262A.6 RoP reflects the spirit of the Trade Secret Directive, which also demands for access of at least one natural person from each of the parties and their respective representatives, in order to guarantee the fundamental right to a fair trial. This has been an express decision by the Member States of the European Union which is to be respected by the UPC (Art. 20, 24 (1)(a) UPCA).
Recent case-law of the Milan Local Division
In a recent case before the Milan Local Division, the Claimant sought to include a partner at a US law firm in the confidentiality club as a legal representative in parallel US proceedings. This individual did not coincide with the categories specified by the Defendant for the confidentiality club (i.e. one of Applicant’s employees to be named by Applicant, their UPC representatives, witnesses and expert witnesses which require access to the Confidential Information for the purposes of these proceedings). The Claimant argued that the confidentiality request was too narrow and disproportionate.
The Court recalled prior judgments concerning Rule 262A RoP, emphasizing that the number of individuals with access to confidential information must be limited to what is necessary to uphold the parties’ rights to an effective remedy and a fair trial during legal proceedings.
To uphold the adversarial principle and the rights of the defence, the Court determined that this individual should be included. Nevertheless, to avoid creating a fait accompli, the Court deferred the enforceability of the order only in relation to this individual.
In another case before the UPC, it was requested the establishment of a confidentiality club limited to the legal representatives of the opposing party before the UPC. The Defendant did not oppose such a request. The Court in this instance concluded that it is possible for the parties to exclude access by a natural person by mutual agreement or by a waiver of the right of access, ensuring that due process and the right of defence are effectively guaranteed. In particular, the Court noted that at least when the patent system intersects with antitrust issues, the EU framework explicitly permits access to be limited to legal counsel
A flexible approach by the UPC
The Unified Patent Court system closely guards the confidentiality of information deemed sensitive by the parties and requires the judges to adopt measures to protect such information in a timely manner and after careful consideration. At the same time, judges are keen to align with a flexible, case-by-case approach, demonstrating how the UPC system carefully balances the right to confidentiality with the importance of transparency and the right of defence.
This is particularly important in preliminary proceedings, where orders for the preservation of evidence or the inspection of premises may entail the disclosure of confidential information to the applicant: this requires the Court to hear the other party before deciding whether and to what extent the evidence should be disclosed.
This newsletter is for the sole purpose of providing updates and general information and is not intended as legal advice on any particular or specific issue.
For clarifications or information, please contact the authors or your reference professional in the Intellectual Property area at our Firm.
Niccolò Ferretti, Partner
E: n.ferretti@nmlex.it
T.: +39 026575181
Emanuela Gaia Zapparoli, Counsel
E: e.zapparoli@nmlex.it
T.: +39 026575181
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