Public access to documents at the UPC

Public access to documents at the Unified Patent Court (UPC) is generally governed by the following provisions of the Agreement on a Unified Patent Court ( UPCA)This conclusion was confirmed by the Decision of the Court of Appeal of the Unified Patent Court delivered on 10.4.2024 in case UPC_CoA_404/2023 (APL_584498/2023) https://www.unified-patent-court.org/sites/default/files/files/api_order/CA6099480F08111F4E2F898795DC8B8D_en.pdf (see points [40-42]).

As to the Register, Article 10(1) UPCA, last sentence provides that:

“Subject to the conditions set out in this Agreement and the Rules of Procedure, the register kept by the Registry shall be public.”

As to the proceedings before the UPC being public, Article 45 UPCA provides that:

“The proceedings shall be open to the public unless the Court decides to make them confidential, to the extent necessary, in the interest of one of the parties or other affected persons, or in the general interest of justice or public order.”

Based on Article 52(1) UPCA, first sentence:

“The proceedings before the Court shall consist of a written, an interim and an oral procedure, in accordance with the Rules of Procedure.”

In relation to the protection of confidential information, Article 58 UPCA provides that:

“To protect the trade secrets, personal data or other confidential information of a party to the proceedings or of a third party, or to prevent an abuse of evidence, the Court may order that the collection and use of evidence in proceedings before it be restricted or prohibited or that access to such evidence be restricted to specific persons.”

In accordance with Article 24(2) of the UPC Statute, these provisions were further implemented in the Rules of Procedure of the UPC (RoP) in Rule 262Based on the Amendments to the Rules governing the Registry of the UPC (RoR) dated 31.7.2023, R. 262.1(b) RoP provides for public access to information directly related to proceedings before the Court but is not applicable on information not directly related to such proceedings for which R.37(4) RoR is applicable.. Under its paragraph 1, it is provided that:

“Without prejudice to Articles 58 and 60(1) of the Agreement and subject to Rules 190.1, 194.5, 196.1, 197.4, 199.1, 207.7, 209.4, 315.2 and 365.2, and following, where applicable, redaction of personal data within the meaning of Regulation (EU) 2016/679 and confidential information according to paragraph 2 of this rule

(a) decisions and orders made by the Court shall be published,

(b) written pleadings and evidence, lodged at the Court and recorded by the Registry shall be available to the public upon reasoned request to the Registry; the decision is taken by the judge-rapporteur after consulting the parties.“

According to the publicly available sources, the legislative history of this rule stems already from the 4^th draft https://www.veron.com/wp-content/uploads/2009-10-16_Consolidated_Draft_RoP_4_VC09.pdf version of the RoP dated 16.10.2009. Rule 352 thereof provided that all pleadings shall be available to the public, unless a party requests that certain information be kept confidential, and the Court makes such an order. This provision was amended in the 5^th draft https://www.veron.com/wp-content/uploads/2012-02-03-Draft_RoP_4_ExpMeeting_03_02_2012.pdf dated 27.01.2012 (as R. 342.1 thereof), in that written pleadings and evidence lodged at the Court and recorded by the Registry shall be available to the public for online consultation, unless a party requests that certain information be kept confidential and the Court makes such an order. This provision https://www.casalonga.com/IMG/pdf/14th_draft_rop.31012013.pdf seems to have remained unchanged up until the 14^th draft version dated 31.01.2013 (as R. 262.1 thereof), which further developed the mechanism for filing of a request for excluding public access to the file or parts of the file (i.e., a https://www.veron.com/wp-content/uploads/2013-05-31_Draft_15_Rules_of_Procedure_UPC.pdf confidentiality request now implemented in R. 262.2 RoP). Throughout the 15^th draft version dated 31.5.2013, the 16^th draft version https://www.veron.com/wp-content/uploads/2014-01-31_16th_Draft_Rules_Procedure_Prep_Com_Markup.pdf dated 31.1.2014, the 17^th draft version https://www.veron.com/wp-content/uploads/2014-10-31_UPC_Rules_of_Procedure_17th_Draft.pdf dated 31.10.2014, and the 18^th draft version https://www.veron.com/wp-content/uploads/2015-10-19_Agreement_UPC_DE-EN-FR_and_Rules_Procedure_UPC_DE-EN-FR_Draft_18.pdf dated 19.10.2015, the concept of, in principle, open public access to written pleadings and evidence in the then Rule 262.1 remained the same (notwithstanding several other amendments of this Rule in these drafts, including removal of ‘online consultation’ in the 17^th draft).

It was not until the last amendment to the text of the draft RoP approved by the UPC Preparatory Committee dated 15.3.2017 https://www.veron.com/wp-content/uploads/2022-07-08_ROP_TRACKED_ac_04_08072022_rop_annex_1_en_final_tracked_for_publication.pdf, where R. 262.1, lit. (b) was amended in its form in which it was finally adopted and implemented into the final version of the RoP and introduced herein the need for ‘a reasoned request’ for obtaining public access to written pleadings and evidence and the required adjudication mechanism by the judge-rapporteur. In relation to the written pleadings and evidence in R. 262, paragraph 1(b) RoP, the explanatory notes to the amended rules state inter alia the following:

“Written pleadings and evidence of a specific case shall also be available to the public on a reasoned request to be decided by the judge-rapporteur. The CMS is configured in a way that the public can take note of the existence of documents and orders but not their contents. To see the contents of such documents an application procedure will be necessary. The requested information would be provided after the data check and, where applicable, the redaction of personal information. Likewise, parts of the content classified as confidential information would be redacted in the documents to the public.” (emphasis added)

Therefore, even though the last-minute amendments introduced a requirement of ‘a reasoned request to be decided by the judge-rapporteur’, it was mainly from the perspective of accommodating the need to have the documents checked for personal data and information (as this would otherwise not be made by the Court for each and every submission) and not in order to further hinder public access to these documents. Also, no distinction at this point in time was made with respect to still pending and already concluded proceedings before the Court.

Furthermore, it should be noted that the practice for public access to court documents within the UPCA Contracting Member States and the Contracting States of the EPC is far from being harmonised. While for example Finland, Sweden, and the United Kingdom provide for a much open system and public access to court files, other countries (e.g., Germany, the Czech Republic) provide for a much more restricted approach for allowing third-party access to court documents. Thus, there is not a common and generally recognized principle neither among the UPC Contracting Member States nor the Contracting States of the EPC. Nevertheless, since the UPC is a completely new court and its decisions are subject to a wide public scrutiny, adopting an approach that provides for a more open public access to documents would be beneficial. Furthermore, the UPC is a specialized patent court, adjudicating patents as erga omnes rights affecting the wider public and therefore does not need to concern itself with issues of public access in much more sensitive private family or criminal matters and the RoP may be adapted specifically to such cases.

As is well known to the members of the epi, the EPO provides for a comprehensive and extensive system of transparency towards the public in both examination (after the publication of the concerned European patent applicationArticle 128(4) EPC) and opposition/limitation/revocation proceedings (subject only to the exclusion of certain sensitive or personal data as foreseen by Rule 144 EPC implementing Article 128 EPC and the corresponding decision of the President of the EPODecision of the President of the European Patent Office dated 12 July 2007 concerning documents excluded from file inspection (OJ SE 3/2007, 125)). In general, this means that the entire prosecution history of the concerned European patent application (or history of the opposition/limitation/revocation proceedings with respect to the granted European patent) is available online for public inspection, including all the written submissions and evidence submitted by the parties and their representatives. In-line with the wording of Article 10(1) UPCA, Article 127 EPC also states that the European Patent Register shall be open to public inspection.

In view of the final text of the adopted RoP and prior to the commencement of the UPC on 1.6.2023, several uncertainties remained in relation as to what does ‘a reasoned request’ in R. 262.1(b) RoP actually mean and what requirements need to be fulfilled by the applicant (i.e., the public) for requesting access to the ‘written pleadings and evidence’ under R. 262.1(b) RoP. Further, question as to what constitutes said ‘written pleadings and evidence’ was also being frequently raised.

Upon commencement of the UPC on 1.6.2023, several requests under R. 262.1(b) RoP were filed. Two main orders were initially rendered by the Munich Central Division and both had rejected the R. 262.1(b) RoP requests. In case UPC_CFI_1/2023 Order of the Court of First Instance of the Unified Patent Court delivered on 20.9.2023 (ORD_ 550152/2023) https://www.unified-patent-court.org/sites/default/files/upc_documents/2023-09-20-cd-munich-upc_cfi_1-2023-ord_550152-app_546231-2023_order-rejecting-2621b-application_anonymized.pdf, the Munich Central Division held in the headnotes that:

“Rule 262.1(b) RoP requires a concrete and verifiable, legitimate reason for making available written pleadings and evidence upon a request by a member of the public. The wish from a natural person to form an opinion on the validity of a patent out of a personal and a professional interest is not a legitimate reason as required by Rule 262.1(b) RoP.”

In case UPC_CFI_75/2023Order of the Court of First Instance of the Unified Patent Court delivered on 21.9.2023 (ORD_ 552745/2023) https://www.unified-patent-court.org/sites/default/files/upc_documents/2023-09-21-cd-munich-upc_cfi_75-2023-ord_552745-app_545443-2023-order-rejecting-rule2621b-request-upc_cfi_75_2023_anonymized.pdf, the Munich Central Division held in the headnotes that:

“Rule 262.1(b) RoP requires a concrete and verifiable, legitimate reason for making available written pleadings and evidence upon a request by a member of the public. To be informed of the proceedings before the Unified Patent Court for the purposes of education and training is not a legitimate reason as required by Rule 262.1(b) RoP. It is also insufficiently concrete and verifiable. No legal basis to give access to letter for Applicantservice.”

Contrary to the above orders rejecting public access to documents, the Nordic-Baltic Regional Division in case UPC_CFI_11/2023Order of the Court of First Instance of the Unified Patent Court delivered on 17.10.2023 (ORD_543819/2023) https://www.unified-patent-court.org/sites/default/files/upc_documents/2023-10-17-rd-nordic-baltic-upc_cfi_11-2023-ord_543819-2023-act_459791-2023-anonymized.pdf provisionally allowed access and held in the headnotes that:

“Article 45 UPCA means that also the written procedure of the Court shall, in principle, be open to the public unless the Court decides to make it confidential, to the extent necessary, in the interest of one of the parties or other affected persons, or in the general interest of justice or public order. If a person has made an application under Rule 262.1(b) for access to pleadings or evidence and provided a credible explanation for why he/she wants access, the application shall be approved unless it is necessary to keep the information confidential.”

This order was appealed to the Court of Appeal of the UPC that has upheld the initial order of the Nordic-Baltic Regional Division and established the core principles for interpreting R. 262.1(b) RoP and public access to documents at the UPC. In its decision in case UPC_CoA_404/20231 issued on 10 April 2024, the Court of Appeal firstly confirmed the general principles laid down in the UPCA, in that the UPC register is public and the proceedings (including the written proceedings) are open to the public, unless the balance of interests involved is such, that they are to be kept confidential, which means that in such cases access to the public is to be denied. It was also clarified that in the requests pursuant to R. 262.1(b) RoP – the interests of a member of the public of getting access to the written pleadings and evidence must be weighed against the interests mentioned in Art. 45 UPCA – this includes the protection of confidential information and personal data but is not limited thereto, also general interest of justice (which includes protection of the integrity of proceedings) and public order (is at stake e.g., when a request is abusive or security interests are at stake) also have to be taken into account. Therefore, the applicant must state reasons why a member of the public has an interest to obtain access to the written pleadings and evidence, to allow the judge-rapporteur to balance all the interests in Art. 45 UPCA.

It was further distinguished by the Court of Appeal between two situations when requesting access to documents under R. 262.1(b) RoP – i) concluded proceedings and ii) ongoing proceedings. It was held that the general interest of a member of the public usually arises only after a decision was rendered. At this point, there is a decision that needs to be understood and the handling of the dispute by the Court can be scrutinised, in view of the arguments brought forward by the parties and the evidence relied upon. The interest of integrity of proceedings usually only plays a role during the course of the proceedings. Thus, the general interest of the member of the public vs. the protection of integrity of proceedings is usually properly balanced and duly weighed against each other, if access to written pleadings and evidence is given to a member of the public after the proceedings have come to an end by a decision of the Court.

It was further clarified by the Court of Appeal, that if a decision is rendered by Court of First Instance and an appeal is or may be lodged, the conclusion and balancing of interests in favour of allowing access still applies to the written pleadings and evidence in the proceedings at first instance. Withholding access to these documents no longer serves the purpose of protection of integrity of proceedings, since the publicly available decision will contain the relevant arguments and evidence presented by the parties and thus (may) already become(s) subject to public debate. Further clarification was also provided in that same principles as mentioned above apply to proceedings that are concluded before a decision is rendered (e.g., by way of a settlement).

Thus, in relation to the already concluded proceedings, the general interests of public (such as scientific and/or educational interests) are sufficient for gaining access to written pleadings and evidence. The principles established by the Court of Appeal were very recently implemented by various orders of the Court of First Instance. In the order of the Munich Central Division in case UPC 75/2023Order of the Court of First Instance of the Unified Patent Court delivered on 22.8.2024 (ORD_591107/2023) https://www.unified-patent-court.org/sites/default/files/files/api_order/2024-08-22_CD%20Munic%20UPC_CFI%2075-2023%20ORD_591107-2023%20App_588681-2023%20redacted.pdf issued on 22.8.2024, it was held that the applicant does not need to have a direct or immediate interest in obtaining access to the requested documents and that even a general nature of the interest invoked by the applicant suffices in the proceedings that have come to an end, which is no longer counterbalanced by the integrity of the proceedings. In another two recent cases UPC_CFI_130/2024Order of the Court of First Instance of the Unified Patent Court delivered on 29.7.2024 (ORD_39917/2024) https://www.unified-patent-court.org/sites/default/files/files/api_order/888177501C78D3807443A3E09ABD624E_en.pdf and UPC_CFI_131/2024Order of the Court of First Instance of the Unified Patent Court delivered on 29.7.2024 (ORD_39938/2024) https://www.unified-patent-court.org/sites/default/files/files/api_order/C12558BFF30134A290EBCD57B30B4E4D_en.pdf , both orders of the Hague Local division noted that access to documents in order to enable better understanding and scrutiny of decisions is a legitimate reason for a requesting access to written pleadings and evidence in already concluded proceedings.

However, in relation to still ongoing proceedings, the Court of Appeal held that something more is required – a general interest as mentioned above is not sufficient anymore; a specific interest in gaining access to a particular case is required. This direct interest in the subject matter of the proceedings may arise, for example, when a member of the public is concerned with the validity of a patent that affects them as a competitor or licensee. Such an interest may also arise if a party in the case is accused of infringing a patent with a product that is the same as or similar to the one the public member has introduced (or intends to introduce) to the market. When a member of the public has such a direct legitimate interest in the subject-matter of proceedings, this interest does not only arise after the proceedings have come to an end but may very well be present immediately. Thus, when then balancing direct interest of a party vs. general interest of integrity of proceedings – balance will then generally be in favour of granting access to the written pleadings and evidence of such proceedings. In that case, it was further noted that the Court may, for the purpose of appropriate protection of the integrity of proceedings, impose certain conditions on granting access, such as the obligation for that member of the public to keep documents he was given access to as confidential, as long as the proceedings have not come to an end.

In relation to ongoing proceedings, the principles established by the Court of Appeal were recently interpreted in several cases – for example, in revocation action in case UPC_CFI_316/2023Order of the Court of First Instance of the Unified Patent Court delivered on 24.4.2024 (ORD_587436/2023) https://www.unified-patent-court.org/sites/default/files/files/api_order/2024-04-24%20CD%20Paris%20UPC_CFI_316-2023%20ORD_587436-2023%20App_587265-2023%20anonymized.pdf , the Paris Central Divisions held that an applicant that is also the opponent in parallel EPO opposition-appeal proceedings with respect to the same European Patent, but is not a party to the main action at the UPC, indeed has a direct interest that outweighs the general interest of integrity of proceedings. This was confirmed in several further similar cases.

On the other hand, the Vienna Local Division has recently denied third party access to documents in ongoing infringement action in case UPC_CFI_33/2024Order of the Court of First Instance of the Unified Patent Court delivered on 12.8.2024 (ORD_39223/2024) https://www.unified-patent-court.org/sites/default/files/files/api_order/B691AAFC98866EE725DB34C32CFF8D5F_de.pdf , where the applicant requesting access has reasoned his request on the basis that he is allegedly offering a competing product as the plaintiff in the main infringement action and has also been accused by the plaintiff of supplying the product to defendants in parallel infringement proceedings before the Ljubljana District Court enforcing the same European Patent. The Court, while denying the applicant’s request, held that protection of the integrity of the proceedings in pending proceedings is of utmost importance, and that concrete legal interest is required, beyond a mere economic interest (must have impact for legal circumstance of the applicant). The reasoning in the order of the Vienna Local Division seems to assume that, by having access to the European Patent in suit, including the description and drawings, the applicant requesting access may freely access the scope of protection and whether its product falls within the scope of the claims. However, this assumption clearly does not take into account the possible flexible interpretation of the granted claims that may be put forward by the patent holder in its submissions and may be contradictory to its submissions and/or assertions made during prosecution at the EPO (often referred to as the “Angora cat” paradox“Angora cat” paradox referred to by Jacob LJ in European Central Bank v DSS [2008] EWCA Civ 192 at [5] https://www.bailii.org/ew/cases/EWCA/Civ/2008/192.html ), as well as the evidence relied upon by the patent holder when enforcing its patent rights against the same or similar product. On the other hand, this situation seems to have been rightly considered by the Court of Appeal in its decision in case UPC_CoA_404/20231, where a third party being a competitor or licensee is considered to indeed have a specific interest in the subject-matter of the proceedings, when it is concerned with validity of a patent or where the party in that main infringement case is accused of infringing a patent by a product, which is the same or similar to a product (to be) brought on the market by such third party (at [53]).

Recently as well, the Paris Central Division has denied a third party request for accessing all the pleadings and evidence in a revocation action in case UPC_CFI_189/2024Order of the Court of First Instance of the Unified Patent Court delivered on 23.9.2024 (ORD_36092/2024) https://www.unified-patent-court.org/sites/default/files/files/api_order/6DC0CBB71E15998B9C5DA60EB2A3454E_en-anonymized_0.pdf , on the basis that the mere fact that the applicant is operating in the same field as the patent in dispute is not sufficient to establish a specific interest in ongoing proceedings (was not proven that the applicant is a competitor and, as such, is concerned with the validity of the patent) and hence the protection of the integrity of ongoing proceedings outweighs the general interest of the applicant.

It is therefore clear from the above overview that public access to documents at the UPC is far from being straightforward and raises several issues. Therefore, I would like to put forward possible considerations for access to documents at the UPC de lege ferenda (in view of the possible amendments to the RoP under Art. 41(2), 2^nd sub-paragraph UPCA):

• Simplification of the whole process would be beneficial for both, the third-parties (i.e., the public) and the Court itself – avoiding any adversarial nature of the proceedings and the need for adjudication by the judge-rapporteur; the Parties to the main proceedings, which are subject to the disclosure of documents to the public, would anyway always have the option of requesting confidentiality of certain information under R. 262.2 RoP due to specific reasons following the procedure contained therein, and would then in return, be obliged to file the redacted versions of the documents, allowing direct and easier public access – it is in fact at this stage of the confidentiality request procedure under R.262.2 RoP, when the Court would make a priori assessment of what is allowed to be confidential information excluded from public access with the Parties to the main proceedings and without any involvement of any third party; a posteriori assessment would then only be required for a request of a member of the public under R. 262.3 RoP to access such a priori excluded confidential information, which may very well be considered a contention matter and requires the necessary reasoning for gaining access.
  Also, no balancing of interests would be required in that case – the Parties would be aware from the beginning, that everything they submit, and that is not subject to confidentiality under R.262.2 RoP (or any personal data), could be potentially made available to the public in the same manner, as well as they already know that every piece of evidence submitted by a party is made available to the other party in the course the UPC proceedings, unless a confidentiality vis-à-vis the other party is requested (i.e., the confidentiality club under R. 262A RoP).
• Implementation of the concept of a wider access to ‘the public’, as was foreseen throughout the legislative history of the corresponding provisions of R. 262.1(b) RoP, and as is the case, for example, when requesting opt-out documents under R. 37.4 RoRRules governing the Registry of the UPC (Amended 31 July 2023) – Note that upon granting access to the third-party requesting access to the Registry, the accessed opt-out documents are then accessible and made available to any third-party in the CMS and not only to the third party that made such request). The same should apply for requesting access to written pleadings and evidence under R. 262.1(b) RoP when allowing access to redacted documents – there should be no need for a specific interest of each individual member of the public, whereas an application under R. 262.3 RoP for access to a priori excluded and confidential information under R. 262.2 RoP is made by ‘a member of the public’ and requires grounds and specific reasoning for lifting such previously granted confidentiality protection.
• If the above points are implemented, another burdensome requirement could and should be lifted as unnecessary, i.e., requirement for the public requesting access to be represented by a registered UPC representative – this would administratively lower the burden on the Court, as there would be no contentious proceedings and no adjudication would be required by the judge-rapporteur. It would also reduce the burden and potential costs implication on the public seeking such access and be much more supportive towards transparency, public scrutiny, and scientific / educational objectives of the UPC proceedings towards the wider public.
• It is also relevant that only European Patents may be subject to the proceedings before the UPC, and as such, these will always have their examination or even opposition history fully visible in the EPO Register. Thus, it would be beneficial to interpret and implement the rules applicable to the UPC proceedings in close connection with the rules applicable to the EPO proceedings, for the legal certainty of third parties. In this regard, the importance of claim interpretation and corresponding legal certainty of third parties (i.e., the public) should be of utmost importance and shall not be hindered – this plays a crucial role during both validity and enforcement proceedings of the relevant patent rights.

Disclaimer: Due to my direct involvement in case UPC_CoA_404/2023 as one of the Respondent’s co-representative, the views and opinions expressed in the above article are solely my own personal views and cannot be attributed to those of the client (Respondent), any of the other (co)-representatives, my employer, organization, committee, or any other group.

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