Provisional protection of secrecy in summary proceedings before the UPC

Local Division Düsseldorf, procedural order of 23 February 2024 – UPC_CFI_463/2023 – 10x Genomics/Curio Bioscience

In its procedural order of 23 February 2024, the Düsseldorf Local Court dealt with the question of how provisional protection of secrets is to be guaranteed in urgent matters.

I. Facts of the case

On 4 December 2023, Applicant filed an application for interim measures with the Local Division Düsseldorf.

Before the expiry of the opposition period (R. 209.1 (a) VerfO) and before filing of the notice of opposition, Opponent requested that measures be ordered for the provisional protection of confidential information. By procedural order dated 14 February 2024, the Local Division deferred its decision on the requests until Opponent had filed its opposition and submitted a request for the protection of confidential information. In this context, it also explained the detailled procedure for the protection of confidential information provided for by the case management system, according to which the Division can initially issue orders for the provisional protection of (allegedly) confidential documents.

By filing the opposition together with the Exhibits on 15 February 2024, Opponent applied for protection of the confidential information contained therein. In a procedural order dated 16 February 2024, the Local Division granted Applicant’s authorized representatives named in the proceedings access to the unredacted version of the documents submitted and obliged them to confidentiality – also vis-à-vis Applicant – under threat of a penalty payment. At the same time, the parties were given the opportunity to comment on which persons should have access to the information until the final decision on the protection of confidentiality.

Opponent requested that access to the information be restricted to four legal representatives known by name who undertake not to take part in any license negotiations in the field of the teaching of the patent for a period of five years. On auxiliary basis, an employee from Applicant’s legal department, who is also not involved in any business decisions, should also be granted access, whereby this employee should also undertake not to take part in any license negotiations in the field of the teaching of the patent for 5 years.

Applicant, on the other hand, requested access to the (allegedly) confidential information for the lawyers of the law firm mandated by Applicant and for two named, reliable persons at Applicant. On auxiliary basis, it requested access for the lawyers of the law firm mandated by Applicant actually handling the case, two paralegals and the two named, reliable persons at Applicant.

II. Order of the Local Division Düsseldorf

In the provisional confidentiality order, the Local Division Düsseldorf restricts access to the redacted information until a final decision on the request for protection of confidentiality on the part of Applicant to the lawyers of the law firm mandated by Applicant actually dealing with the case, two paralegals and one of the named, reliable persons at Applicant. These persons are obliged to maintain confidentiality also vis-à-vis Applicant. The information may not be disclosed outside the proceedings. Applicant must ensure that only the reliable person has access to the information.

Based on Art. 9(1) and (2)(a) Directive (EU) 2016/943, Art. 58 UPCA and R.262 ROP, the Division finds that access to (alleged) trade secrets can be restricted to a limited number of persons. Until a final order on protection of confidentiality is issued, access can be further restricted in order to ensure effective protection of trade secrets. The request for protection of confidentiality can also be discussed with the party with the redacted versions of the documents concerned.

In the present case, however, the special characteristics of the summary proceedings must not be disregarded. Deadlines for briefs are short. Extensions of deadlines are generally ruled out and the date for the oral hearing is often scheduled at short notice. All of this must be taken into account when determining the group of people who should have access to the information in order to ensure a fair procedure. Accordingly, the party affected by the order on provisional protection of confidentiality order must be fully able to work, taking into account the confidentiality interests of the opposing party, and be in a position to comment on each point raised by the opposing party in the case. In accordance with its order of 14 February 2024, the Local Division thus comes to the preliminary conclusion that, as a rule, four attorney representatives (two partners and two associates to support them), two patent attorney representatives and three representatives of the client must be granted access in summary proceedings, whereby this group of persons can be extended by two paralegals if necessary. However, this is again subject to a case-by-case examination, as the group of persons may not exceed the number necessary to ensure that the right of the parties to the proceedings to an effective legal remedy and a fair procedure is observed, in accordance with R. 262.6 s. 1 of the Rules of Procedure.

Applying this to the present case, the Local Division finds:

1). Applicant’s patent attorneys are not to be granted access, as the redacted information is of a purely commercial and non-technical nature.

2). Insofar as Applicant requests access for three partners and one associate of the mandated law firm, the Local Division has no objections. Restricting access to legal representatives who are not involved in pending proceedings concerning the same area of law before the UPC would unreasonably restrict Applicant’s choice of legal representatives. In addition, the legal representatives would be significantly hindered in the exercise of their profession without this being justified by overwhelming interests on Opponent’s side. Sufficient protection is guaranteed by the confidentiality order under threat of coercive measures.

3). In addition, access must be restricted to the employee at Applicant named in Applicant’s auxiliary request, who, according to Applicant, is the main coordinator of its patent disputes and the central internal person in the day-to-day management of Applicant’s litigation. Both Art. 9 Directive (EU) 2016/943 and R262a.6 ROP stipulate that at least one natural person of the party must be granted access. The fact that this employee may be involved in commercial decisions of Applicant, without this being explained in more detail, does not justify a different decision. The confidentiality order under threat of penalty payments also offers sufficient protection in this respect. Accordingly, Applicant does not have to prove that it has implemented procedures to protect the redacted information. Ordering an obligation not to take part in any license negotiations in the field of patent teaching for five years would disproportionately interfere with Applicant’s right to exercise his profession.

Kristin Jochheim & Charlotte George