A guide to the UPC and the UP - Flipbook - Page 375
Confidentiality
18-91 The Court may order that confidential information only be provided to “named persons”
on “appropriate terms of non-disclosure”. 115 The rapid timetable of proceedings before the
Court results in a short timeframe for the application to be made and the evidence produced.
To avoid any delay therefore it is advisable that where confidential information may be
disclosed the applicant identifies in the application the people who will have access to the
confidential information, together with their job titles and, if their function in the litigation is not
obvious from that, further information as to why they need access to the information. The term
“named persons” suggests that not only employees of the applicant, but also the lawyers and
patent attorneys representing the applicant should be identified individually.
18-92 Particular care should be taken when suggesting certain of the applicant’s employees have
access to the opponent’s confidential information. For example, it may not be appropriate to
include key scientists and persons in charge of selecting and drafting the company’s patent
applications in the list of people who have access to the confidential information. Since they
will be familiar with the applicant’s technology, there may be risk of inadvertent disclosure
when they learn of the defendant’s technology which might result in contamination between
technologies. However, these same people may be the most knowledgeable about the
technology and therefore best placed to assess the information disclosed by the other party.
In certain jurisdictions, parties are used to dealing with such issues. The parties will first try
to agree who should have access to the confidential information (or be in the so-called
“confidentiality club”). In the absence of agreement, the court is used to weighing up the
different needs of the parties before deciding who should be in the confidentiality club.
18-93 The RoP leave open whether the “appropriate terms of non-disclosure” should be agreed
between the parties or imposed by the Court. One option is that the applicant sets out in
the application the confidentiality undertakings that it proposes so that these can either
be endorsed or amended by the Court.
18-94 There is no express penalty provided by the RoP should there be a breach of any confidentiality
provisions attached to the order to produce documents. A party producing evidence of a
confidential nature may therefore wish to ask the Court to include a penalty or sanctions.
Procedure
18-95 On an application by a party, the judge-rapporteur can make an order to produce evidence
during either the written or the interim procedure. No fee is payable. Such an order may only
be made where the Court has given the party who will be the subject of the order an
opportunity to be heard. 116 Following r.264 RoP, this opportunity can take the form of written
submissions provided within a specified timeframe and/or an oral hearing on a date fixed by
the Court which may take place by telephone or videoconference.
18-96 R.190(4) RoP specifies that an order to produce evidence must specify in particular:
– Under which conditions, in what form and within what time period the evidence is to be
produced; and
– Any sanction which may be imposed if the evidence is not produced according to the order.
18-97 If a party fails to comply with an order to produce evidence, the Court “shall take such failure
into account when deciding on the issue in question”. 117
115
116
117
r.190(1) RoP.
rr.190(2) and (3) RoP.
r.190(7) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 365
