File Inspection at the UPC

If a company is concerned that a patent may be (or has been) asserted against it, access to the files of parallel validity or infringement proceedings relating to that patent will save time and money in preparing a defense.

The files in opposition proceedings before the European Patent Office or the German Patent and Trademark Office are usually open to the public without restriction, so that the prior art submitted and the arguments on the interpretation of the contested patent and its (lack of) validity can be ascertained immediately. In nullity proceedings before the German Federal Patent Court, access to the file must be requested. Although this is usually granted in full, the patentee can regularly delay the inspection for several months from the filing of the request by means of a mere pro forma objection. In infringement proceedings, on the other hand, German courts regularly do not grant access to the file; only their opinions are published, so that non-infringement arguments have to be awaited.

What is the situation before the Unified Patent Court (UPC)?

According to Rule 262.1(b) of the Rules of Procedure of the UPC (RoP), unlike decisions and orders of the court (Rule 262.1(a) RoP), pleadings and evidence (in all types of proceedings) are not to be made public but must be made public upon a reasoned request and after hearing the parties. Regarding formalities, the Court of Appeal has already ruled (order of February 8, 2024, file no. UPC_CoA_404/2023) that such a request must be made by a lawyer admitted to practice before the UPC.

It was now eagerly awaited which substantive reasons justify the application for file inspection. There had been divergent decisions on this at the first instance level. The Nordic-Baltic Regional Chamber had in principle allowed a generally expressed professional or scientific interest to suffice (order of October 17, 2023, file no. UPC_ CFI_11/2023), while the Munich Central Chamber did not (order of September 20, 2023, file no. UPC_CFI_1/2023 and order of September 21, 2023, file no. UPC_CFI_75/2023). However, both chambers had demonstrated legal doctrinal depth for their respective lines of reasoning and, in particular, derived various arguments from the systematics of the Rules of Procedure and their history. It therefore appeared open as to how the Court of Appeal would position itself.

In its decision of April 10, 2024 (file no. UPC_CoA_404/2023), the Court of Appeal has now basically followed the line of the Nordic-Baltic Regional Chamber, according to which a generally expressed interest in accessing the file is sufficient as long as it is not abusive (paras. 43, 44 and 55 of the decision). The court did not indicate when abuse is given, but since practically any expressed professional or scientific interest is sufficient, abuse constellations should be limited to absolutely exceptional cases. The court justifies this broad approach primarily by stating that business secrets and personal data can be protected by means of a separate procedure in accordance with Rule 262.2 RoP (paragraphs 45 and 46).

However, the fact that the specific case concerned proceedings that had already been concluded could be seen as a limitation of this broad approach. The Court sees no need to preserve the integrity of the proceedings by refusing access to the file where the proceedings have already been concluded whether by a judicial decision or by a settlement (paragraphs 48, 49 and 52). However, the statements in para. 53 then indicates that, in the case of ongoing proceedings, a personal interest in the patent, such as the threat of a claim arising from it, may be necessary to justify a request for access to the file.

In practice, this means that companies may be able to obtain access to the file anonymously through their lawyer in the case of closed proceedings, because a general interest can be invoked, but in the case of ongoing proceedings, the potential personal interest may have to be disclosed – which may be disadvantageous if, for example, there is a fear that the request for access to the file may alert the patent proprietor to a previously unknown patent infringement.

Companies must therefore carefully consider, with the help of legal advice, whether to request access to files in ongoing proceedings and how exactly to justify the request.