UPC CFI LD Mannheim, 14 February 2024, Incremental 13-step procedure for confidential submission of license agreements without court order to produce evidence
16-02-2024 Print this page
Confidential submission of SEP Patent Licenses. There is typically a recognisable need for confidentiality of business-related information contained in licence agreements and only permit submission upon a court order, which may require involving the respective license agreement partner in the proceedings. Incremental 13-step procedure enables the parties to obtain comprehensive protection of secrets and allows the parties to submit the documents in the protected proceedings even without a court order to produce them (Rule 262A RoP, Rule 190 RoP).
The confidentiality regime (Rule 262 RoP, Rule 262A RoP) is organised as follows:.
1) Upload the document containing confidential information without any redaction
(see also the order of the Düsseldorf Local Chamber of 14 February 2024 [[in 10x Genomics v Curio Bioscience, IPPT20240214].
2) Indicate in the CMS that the document contains confidential information
3) Upload a redacted version of the document
4) Start the separate CMS workflow (a “related proceeding”) for Rules 262/262A and again select and confirm the documents to be kept secret
5) The request under (4) can be linked to an intra-procedural condition to the effect that the document is only to be deemed to have been filed and may be used in the proceedings by the opposing party and by the court in the proceedings if the court grants to the request
6) If the court intends not to grant the application or to grant it only in part, it shall grant the applicant a hearing beforehand and request him to make the final decision as to whether the document should be deemed to have been submitted and can be taken into further consideration by the opponent and the court in the proceedings when making its decision.
7) In response to the request under (4) the court shall, as a first step, issue a provisional secrecy protection order which, on the basis of the applicant's unilateral submission to date that the document contains information to be kept secret, places it under comprehensive protection for the time being before the document is made accessible to the opposing legal representative - and initially only to him.
8) If the filing of the document is conditional pursuant (5), the opposing counsel shall initially be authorised to use the document solely for the purpose of submitting his observations on the application pursuant to Rule 262A of the Rules of Procedure.
9) After the interim order fully protecting the document for the purposes of the observations has been issued, or at the same time as it is issued, the court shall order the Registry to make the relevant confidential documents available to the opposing party in their unredacted version via the CMS.
10) If the opposing lawyer indicates that he is not in a position to comment on the confidential nature of the information contained in the document until he has consulted with a natural person from his party, he must name this person or persons.
12) If the court considers the application to be only partially allowable or not allowable, it shall inform the applicant of this prior to the decision and give the applicant the opportunity to comment if the application was subject to the condition under (5).
13) In the event of a request for access to the file by a third party not involved in the proceedings pursuant to Rule 262(3) RoP of the Rules of Procedure, the document is protected from access by the parallel request pursuant to Rule 262(2) RoP and is not part of the access to the file by third parties.
Against the background of this regime, a decision on the requests pursuant to Rule 190 RoP is not intended for the time being.
