The entry into force of the Rules of Procedure is part of the final preparations for the United Patent Court (UPC), which is currently expected to start work in early 2023. After the bodies of the UPC were constituted in the course of the year, interviews were held with possible candidates for filling judges' posts and numerous other preparations were made. On 8 July 2022, the Administrative Committee of the UPC met and officially confirmed the locations of the Court of First Instance. The "table of fees", which determines the amount of court fees, was also adopted. Finally, the Administrative Committee adopted the final version of the Rules of Procedure. The last prerequisite for the entry into force of the Rules of Procedure was the opinion of the European Commission on the compatibility of the Rules of Procedure with Union law pursuant to Article 41, paragraph 2, sentence 2 of the Agreement on a Unified Patent Court (UPCA), which is now available.
The entry into force of the Rules of Procedure is an essential step towards making the UPC operational. As soon as the Administrative Committee signals that the UPC is ready for work, Germany will deposit its instrument of ratification for the UPCA, which will then start the three-month "sunrise period" leading up to the entry into force of the UPCA. During this sunrise period, opt-out declarations for European patents will be possible under Rule 5 of the Rules of Procedure.
Long road to the final version of the Rules of Procedure
Just like the preparations of the UPC itself, the beginnings of the Rules of Procedure also go back a long way. This is already evident from the fact that the most recently adapted version was based on the 18th draft. This draft dates from 15 March 2017 when the UPC was already about to be launched. The Rules of Procedure were almost finalised in their last draft version before constitutional complaints in Germany interrupted the preparations.
The progress made with the 18th draft in March 2017 is shown by the fact that the final version of the Rules of Procedure has only a few adjustments from this draft. The consolidated version has also been available in published form in German and French since 1 September 2022.
Procedural files should no longer be completely public
One of the main changes in the final version vis-à-vis the 18th draft concerns Rule 262 of the Rules of Procedure, which regulates public access to the register of the UPC. Rule 262 in the 18th draft of the Rules of Procedure still provided that the register of the UPC should be largely public. Rule 262 was created in view of Article 10, paragraph 1, sentence 2 UPCA, according to which the register kept by the UPC registry is public subject to the conditions laid down in the UPCA and the Rules of Procedure. As a result, in addition to the decisions of the UPC, pleadings of the parties or evidentiary documents had to be published, unless a party requested that certain information be kept secret. The European Patent Office (EPO), for example, handles documents from grant and opposition proceedings on European patents in a similar way. These documents are available to anyone in the online register on the EPO website. In the final version of Rule 262, the rule-exception relationship was reversed. For pleadings of the parties and evidentiary documents, a request for publication of these documents is now required in order to obtain inspection.
Implications of the interim entry into force of the GDPR
But why now, in an age of progressive transparency efforts by public institutions, has the publication of documents in the register been restricted? One reason lies in general legal developments since the Rules of Procedure were drafted years ago. For example, the General Data Protection Regulation (GDPR) has been in force throughout the European Union since 25 May 2018. It thus entered into force long after the signing of the UPCA on 19 February 2013 and also after the publication of the 18th draft Rules of Procedure on 15 March 2017. According to the explanatory notes of the Preparatory Committee on the amendment of Rule 262, the GDPR, to which the UPC is bound, requires that personal data of the parties and third parties must be redacted (i.e. blackened) in any case before documents are published. This concerns both decisions of the UPC and other documents such as pleadings. Therefore, automatic publication of all documents in the publicly accessible register met with data protection concerns.
Further considerations of the UPC Administrative Committee
In addition to the GDPR, the amendments to Rule 262 were also based on the consideration that the procedural documents contain or may contain trade secrets of the parties and third parties, which must remain inaccessible to the public if the respective party has a corresponding interest in secrecy. In the meantime, the entry into force of Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure and the directive's transposition into national law has led to a significant increase in the focus of companies and public institutions on the protection of business secrets and the adoption of appropriate confidentiality measures.
The new regulation's compromise: publication upon reasoned request
In order not to completely exclude the publication of procedural documents, Rule 262.1 lit. b) in the final version provides for a compromise: pleadings of the parties and evidentiary documents will only be made available to the public if a corresponding request, which must be substantiated, has been submitted to the registry of the UPC. The reporting judge decides on the publication of the documents after hearing the parties.
In addition, under Rule 262.2, an affected party may also request that certain information in the parties' pleadings or in evidentiary documents be kept confidential per se. The documents should therefore not be made publicly available until 14 days after they have been made available to the recipients in order to give them sufficient time to consider whether a confidentiality request should be made in respect of certain information. However, even in this case Rule 262.3 provides that information which is the subject of a confidentiality request may exceptionally be made available to members of the public upon a reasoned (counter-)request. In this (counter-)request, the applicant must provide details of the information alleged to be confidential, provide grounds why the reasons for confidentiality should not be accepted and explain the purpose for which the information is needed. In this case, the court decides on the basis of a comprehensive balancing of interests after further written comments from the parties.
This system of comments, applications and counter-applications, which seems complicated at first sight, raises some questions in practice. In particular, it remains to be seen how the confidentiality/disclosure requests under Rules 262.2 and 262.3, which in the 18th draft version of the Rules of Procedure were still conceived for the case of extensive publicity of the register, will be treated by the court in relation to the general application procedure under Rule 262.1 lit. b).
Decisions of the UPC must always be published
However, fears, according to which decisions of the UPC could only be published upon request, have not come true. The final version of Rule 262.1 lit. a) provides that decisions and orders of the UPC must always be published if necessary after redaction of personal data within the meaning of the GDPR and pertaining to information requiring confidentiality. According to the explanatory notes of the Administrative Committee, this is understood to mean that decisions of the UPC are automatically published on the website. When drafting the decision, the relevant panel will immediately prepare a version of the decision that has been redacted in accordance with the requirements of the GDPR.
Unclear legal situation regarding the publication of documents and decisions
It remains to be seen to what extent in the future decisions of the UPC and documents from the proceedings of inpidual cases will be published.
Rule 262.1 lit. b) of the Rules of Procedure merely provides that pleadings of the parties will be published upon "reasoned" request and by the decision of the reporting judge after hearing the parties. The Rule does not specify what such a statement of reasons may look like, and in particular what requirements are to be placed on the applicant's burden of substantiation. Nor is it clear whether an authorised representative of the applicant can file the request, and whether the representative must disclose the true identity of the applicant.
Also, with regard to the publication of decisions and resolutions of the UPC according to Rule 262.1 lit. a), it cannot be fully assessed whether a far-reaching publication practice will actually be established. In any case, the publication of decisions and orders is still subject to the redaction of personal data as well as information requiring secrecy. A look at German courts shows that the associated editorial work often leads to decisions not being published until long after they have been pronounced, or sometimes not at all, because the court administration cannot cope with the extensive editorial tasks due to strains on personnel.
If redacted decisions are then published, the usefulness of the published decision will also depend on the intensity of the redaction (i.e. whether the patent in dispute is apparent from the published version).
Only practice will be able to clarify these open questions once the UPC starts its work, which is expected to be in early 2023.
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