Guidance on UPC confidentiality clubs

How do parties to litigation in the UPC protect their confidential information?

A number of decisions have now come from the UPC concerning access by the public to pleadings and evidence filed at court under Rule 262. But a new decision has illustrated the confidentiality restrictions that can be placed on opposing parties in litigation (what are sometimes referred to as confidentiality clubs), under Rule 262A.

In Avago Technologies v Tesla the defendants requested that certain information in their defence be treated as strictly confidential and accessible only to those representatives and employees of the claimant who have a legitimate interest in it. 

The defendants were successful on two of the four categories at issue, which the court found were very probably trade secrets (under Directive 2016/943).

It was ordered that this information could be accessed by the claimant’s representative and up to three of her colleagues. This would sufficiently safeguard her ability to effectively pursue the legal action. 

The claimant had also named three persons who were employed by a company affiliate who, in addition to the claimant's representative, were allowed to inspect the full versions of the documents because they were assisting with the litigation.

The court also made a number of more general statements about the application of confidentiality restrictions in the UPC:

• Confidentiality restrictions will be ordered in particular if the reasons given by the applicant for the order considerably outweigh the interest of the other party in unrestricted access to the information or evidence in question.
• The existence of the trade secret only needs to be shown as predominantly probable.
• Measures are not limited in scope to the protection of trade secrets under the Directive, but also to personal data or other confidential information of a party.
• The number of persons referred to may not be greater than necessary to ensure the right of the parties to an effective remedy and a fair trial, and must include at least one natural person from each party and the respective lawyers or representatives of those parties.
• The fact that these persons are not employed by the claimant itself is irrelevant. This reflects the fact that in group companies the patent in dispute may be owned by a different entity to the one managing the litigation.

This is a helpful starting point for parties on an issue that will be important in nearly every case, and particularly in cases relating to standard essential patents: how can their confidential information be protected whilst at the same time enabling patent proceedings to be conducted fairly and efficiently?