UPC – Adoption of the final Rules of Procedure

The revised and final version of the Rules of Procedure largely follows the latest draft of the Rules of Procedure of 15 March 2017 but does include several interesting amendments and additions, which we will discuss below.

Enhanced protection of confidential information

Restriction on public access to pleadings, evidence and confidential information

Under the 2017 version of the Rules of Procedure, the guiding principle was that of a public and open docket: the pleadings, evidence, decisions and Court orders would be accessible to the public via the register, although parties could request that confidentiality applies to certain information by providing specific reasons substantiating such a request. The amended and final rules now exclude pleadings and evidence from this guiding principle and in addition provide for greater safeguards from a GDPR and trade secrets perspective.

Pursuant to the final rules, Court decisions and orders will become publicly accessible via the register whereas written pleadings and evidence will only made be available to the public upon a reasoned request from the requesting party, and only after a consultation with the parties by the judge-rapporteur.¹ In addition, for GDPR reasons, personal data in documents will be redacted prior to these documents becoming accessible in the register. Next to the redaction of personal data, the recipients of documents will have the opportunity to ask the Court to redact certain confidential information before the publication of such documents in the register. Recipients will have 14 days to make such a request, in which period the content of the respective documents will not be made available to the public. Publication of the documents in the register will only take place after the Court has rendered its decision on the confidentiality request, even if this decision follows after the 14-day period has elapsed.

There has been significant debate about these provisions: an earlier draft of the new rule would have made even judgments of the Court only accessible upon reasoned request, which multiple professional associations and industry bodies felt was a major obstacle to the success of the Court. The compromise wording that has now been arrived at appears to reflect mainly GDPR-related concerns, and views have been expressed by members of the Administrative Committee that applications for access to pleadings as well as evidence should be treated liberally. It is to be hoped that this will allow the Court to be as transparent as possible.

Confidentiality vis-à-vis the other party

Apart from an expanded confidentiality regime with respect to the public register, the final rules contain a new provision that provides for protection (upon request) of confidential information or the collection and use of evidence vis-à-vis the other party.² Parties may request that the Court (at the time of lodging the relevant document that includes the specific information) declare that certain information or the collection and use of evidence in proceedings should be restricted or prohibited or that access to such information or evidence should be restricted to specific persons.

It should be noted that in any event the information or evidence concerned will be disclosed to the representative of the other party and to one natural person designated by this party. In addition, in the light of EU law and the right to a fair trial, such a request will not be easily granted and will be limited to cases where the interests of the requesting party significantly outweigh the interests of the other party to have access. Notwithstanding this high threshold, the inclusion of this new rule is good news, as patent cases very commonly imply discussion of trade secrets or other confidential information; the obligation to include at least one in-house representative in any confidentiality circle, however, is arguably a weak point of the system.

Rules on permanent injunctions remain unchanged

Article 63 of the UPC agreement provides that, when it finds infringement, the Court “may” issue an injunction. Previous drafts of the rules of procedure had included a provision (Rule 118.2) that provided guidance on the exercise of the discretion, seeking to implement Article 12 of the Enforcement Directive. That provision had been hotly debated, in particular in the context of the call for comments that the Preparatory Committee issued in 2014. In the end, the Committee decided to delete the provision, citing a number of reasons and concluding that the exercise of the discretion granted to the Court by Article 63 would likely be “very exceptional”.³

Despite the importance of the issue and the likely lobbying by various industry bodies, the last set of Rules of Procedure does not include any new provision on this issue, thereby leaving the position unchanged. It will therefore be up to the Court itself to establish, through its case law, the criteria pursuant to which the discretion available under Article 63 should be exercised.

Other amendments

Further noteworthy amendments are as follows:

• A procedure has been included for the Court to deal with unauthorised applications to withdraw or opt out.⁴ The proprietor, applicant or holder of the respective patent or SPC may lodge a separate reasoned application to remove the entry of such unauthorised application or withdrawal, after which the registrar shall decide on such application as soon as possible.
• Within the Rules of Procedure, a legal basis has been created for flexibility on the part of the Court to conduct (parts of) the oral hearing via video, including the hearing of witnesses and experts.⁵ Under the 2017 version of the Rules of Procedure, this was only possible in specific circumstances.
• The Rules of Procedure have been aligned with new EU law on the service of documents and the taking of evidence (Regulation (EU) 2020/1784 (service in member states of judicial and extrajudicial documents in civil or commercial matters) and Regulation (EU) 2020/1783 (taking evidence)).⁶

Footnotes

_{1. Rule 262 (amended).}

_{2. Rule 262A (new) and see also Rules 13, 24, 25, 29A, 44.}

_{3. See https://www.unified-patent-court.org/sites/default/files/Digest_Legal_Group_17th_Draft_RoP.PDF.}

_{4. Rule 5A (new).}

_{5. Rule 112.3 and 104 (h) (amended).}

_{6. Amendment 26 and 17.}