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Trade secrets are an integral part of UPC proceedings. Whether it's about the functionality of the accused embodiment, comparable licenses in the FRAND context, or business figures, the protection of confidential information is relevant in an incredibly high number of cases. However, this protection comes at a price.
One way to protect confidential information is a request to restrict the opponent's access to the confidential information in a pleading pursuant to R. 262A RoP. Such a request is regularly followed by an early preliminary order of the judge-rapporteur, which restricts access to attorneys-eyes-only for the duration of the confidentiality discussions. Once both parties' attorneys have had the chance to comment on the protection as such and on the persons to be included in the confidentiality circle, the judge-rapporteur will issue a final confidentiality order. In accordance with the requirements of the Trade Secrets Directive and the Rules of Procedure, this final confidentiality order will allow access of at least one natural person of the opposing party. The opponent of a party requesting an access restriction will therefore regularly only get access once the confidentiality discussions have been concluded.
We have observed that it can take several weeks and sometimes even more than a month between the request for access restriction and the final confidentiality order. Against this background, both parties should be aware that the delay in access caused for the opponent of such a request can affect the timeline of the proceedings.
Some decisions, e.g. of the Local Division Munich, indicate that the time limit for responding to the pleading containing the confidential information does not start to run until the final confidentiality order, which defines the confidentiality circle, has been issued. Other decisions, e.g. of the Local Divisions Düsseldorf and Mannheim, find that the delay in access caused by the confidentiality discussions can be addressed by a corresponding time extension. In any case, there seems to be agreement that the delay cannot be at the expense of the opponent.
Finally, while confidential information will regularly be included in pleadings concerning the infringement action, parties should be aware that the timeline of a counterclaim for revocation may be affected. It is conceivable that the division envisages a harmonization of the deadlines of the infringement action and the counterclaim for revocation, particularly if this doesn't affect the overall duration of the proceedings.
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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
