Secrecy protection at the UPC

Secrecy protection of confidential information in court proceedings is an issue that comes up again and again in practice. The UPC, the Unified Patent Court, has now released a decision on the Secrecy protection of confidential information.

Coding in particular forms the centrepiece of a company's know-how, which should not be disclosed in court proceedings if at all possible. This applies in the field of software and hardware coding, in the field of artificial intelligence (AI) and in the field of telecommunications, as well as in the field of life sciences, genetics and pharmaceuticals - in short, wherever coding occurs as "organic" coding, for example in genetic building blocks and sequencing.

The present case before the UPC concerned such a patent in the field of life sciences, decided on the subject of secrecy protection (UPC, UPC_CFI_463/2023, dated 14 February 2024). The parties to the dispute are 10x Genomics Inc (USA) and Curio Bioscience Inc (USA), the patent in dispute is the European patent EP 2 697 391 B1, which describes a method and a product for the spatial recognition of nucleic acids in a tissue sample.

In the course of patent infringement proceedings, the applicant 10x Genomics Inc. filed an application for a preliminary injunction against Curio Bioscience Inc. Immediately before the expiry of the opposition period, the defendant requested an order for measures for the provisional protection of confidential information.

Applying to the UPC for secrecy protection

This is a completely normal process, the UPC offers a graduated procedure for applying for confidentiality protection via the so-called Case Management System (CMS).

In the CMS workflow, provisional protection for confidentiality can be ordered. As a rule, this will restrict the authorised persons of the other party until the final decision on the requested confidentiality protection has been made.

In practice, this looks as follows:
A certain piece of information, e.g. the code, is to be placed under secrecy protection. A redacted document is produced that makes the secret information unreadable. It should be noted, however, that completely unredacted versions of the document in question must always be submitted to the UPC together with an application for secrecy protection in accordance with R. 262A VerfO. These are only available for inspection by the court in order to enable the court to make a decision in full knowledge of the allegedly confidential submission.

All documents submitted together with an application for secrecy protection pursuant to Rule 262A RoP are subject to provisional secrecy protection.

Release of documents under secrecy protection

Only the redacted version is visible to the opposing party until the unredacted version is released by the sub-registry of the local division and only on the explicit instruction of the judge.

If it is released, the document is initially released to the opposing party's representative, unless the applicant has authorised the release to other persons yet to be named by the opposing representative.

If, in exceptional cases, the judge-rapporteur considers a provisional secrecy protection order to be unnecessary, the principle of fairness requires that the party seeking secrecy protection be informed before the unredacted version is released. At the same time, an opportunity to comment is granted. The party concerned has the opportunity to react to the release of the information that it considers to be confidential. Ultimately, it can declare that the documents in question should not be made the subject of the proceedings, or not in their entirety.

Who of the opposing party may have access?

The measures for the provisional protection of confidential information, which were requested by the defendant in the UPC decision presented here, also included restricting the opposing party's access to only two legal representatives.

However, the UPC rejected this, with reference to the effective conduct of proceedings and the tight deadlines in summary proceedings such as these. As the proceedings are summary proceedings, the UPC considered a limitation to four attorney representatives (two partners and two associates to support them), two patent attorney representatives and three representatives of the client to be permissible (UPC_CFI_463/2023 LK Düsseldorf).

Would you like to have an innovation or invention protected, for example, by a unitary patent in the EU or defend it in proceedings before the UPC? Our patent law firm has special expertise in this area and also provides authorised representatives before the UPC.

Please do not hesitate to contact us by telephone on +49 (0)69 69 59 60-0 or info@kollner.eu.