A guide to the UPC and the UP - Flipbook - Page 224
Protection of Confidential Information
12-47 The SoC and accompanying documents (including witness statements) lodged at the Registry
will be made available to the public upon a reasoned request to the Registry through the
Court’s Case Management System. 96 However, any party may request that certain information
is kept confidential and, when doing so, has to provide specific reasons for such
confidentiality. 97 Any member of the public can still lodge an application with the Court that the
excluded information be made available. 98
12-48 A claimant wanting to maintain confidentiality over any documents must lodge redacted
copies. 99 The redacted copies will then be available on the public register whilst the judgerapporteur decides the issue of confidentiality as soon as practicable after their designation. 100
However, this requirement does not absolve the claimant from lodging full copies of the SoC
and accompanying documents for use by the Court and the defendant. 101
12-49 The final version of the RoP also now provides that a party may make an application for an
order that certain information contained in its pleadings or the collection and use of evidence in
proceedings may be restricted or prohibited or that access to such information or evidence be
restricted to specific persons. 102 In other words, it provides for the setting up a confidentiality
club. The application needs to be made at the same time as lodging the document containing
the confidential information and the applicant must also provide a redacted and an unredacted
copy if the document. The applicant must set out the grounds upon which they believe the
information should be restricted in accordance with art.58 UPCA. The Court is obliged to ask for
comments from the representatives of the other party prior to making an order and is given
discretion to make an order having considered whether the grounds relied upon significantly
outweigh the interest of the other party to have full access. Insofar as access to the information
is restricted to a limited number of persons that number should be no greater than necessary
in order to ensure compliance with the right of the parties to an effective remedy and a fair trial
and shall include at least one natural person from each party and the respective lawyers or
other representatives of the parties. In practice, it is often in the interests of the parties
themselves to try reach agreement on the composition and the terms of their respective
confidentiality clubs bearing in mind the considerations that the Court will have in mind in the
event of a contested application.
Examination of Formal Requirements of the SoC
12-50 Once the SoC is lodged, the Registry shall as soon as practicable check whether one or more
of the patents concerned is the subject of an opt-out pursuant to art.83(3) UPCA and r.5 RoP. 103
In the event of an opt-out the Registry will, again as soon as practicable, inform the claimant
who may withdraw or amend the SoC as appropriate. Alternatively, it has been suggested that
an opt-out can be deemed to have been withdrawn by the SoC, although it remains to be seen
whether the Court will endorse such a route. 104
96
97
98
99
100
101
102
103
104
r.262(1)(b) RoP.
rr.13(1)(q) and 262(2) RoP. To this end, content of the register is made publicly available only 14 days after it has been
available to all recipients.
r.262(2) RoP.
r.262(1) RoP.
r.13(3) RoP.
It is worth noting that the Court’s Case Management System privacy policy (available at https://cms.unified-patentcourt.org/privacy-policy [Accessed 14 April 2023]) states that the Court offers data security by means of a two-factor
authentication. It goes on to note that the Court cannot guarantee that data transmitted is absolutely secure at all times from
attack by third parties, nor can it guarantee the absolute security of the data transmission process.
r.262A RoP.
r.16(1) RoP.
See chapter 8 (The Transitional Provisions (Including Opt-outs and Opt-ins)) paragraph 8-53.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 214
