UPC denies third party access to revocation action and evidence | Allen & Overy LLP
In two recent decisions, the UPC denied requests for access to submissions and evidence filed in revocation proceedings1.
In Astellas v. Osaka University (UPC_CFI_75/2023), by decision of 21 September 2023, the UPC Munich Central Division denied a third party access to the case file, specifically to Astellas’ revocation action, which was requested for reasons of “education and training”. By decision of 20 September 2023 in Sanofi v. Amgen (UPC_CFI_1/2023), a file inspection request made “to form an opinion on the validity of a patent out of a personal and a professional interest” was likewise denied. The court found these were no concrete and legitimate reasons. The decisions run counter to what at least many German patent litigators are used to. With this decision, the UPC goes different ways from German courts and the EPO where access to the file in revocation proceedings is either unlimited, per se, or denied in very limited ways only, in case of business and trade secrets alleged by one of the parties. This will make it more difficult (and expensive) for third parties to base their own UPC revocation action on an action already filed.
The Astellas Case
Astellas lodged a statement of revocation regarding EP 3 056 563 B1 against the registered proprietors, Osaka University and others. On 10 July 2023, the Munich section of the Central Division received a third-party request for access to court files pursuant to 262 RoP. The rule states the following:
Rule 262 – Public access to the register
[…]
decisions and orders made by the Court shall be published,
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.
[…]
The Applicant requested copies of the Statement of Revocation and the Letter for Service on the Patent Proprietor for “educational and training purposes”. Astellas, opposing the application, argued that a third party should not freely be able to profit from a carefully crafted pleading for its own gain, especially without knowing how this knowledge would be used by the Applicant.
The Sanofi Case
In the Sanofi case for revocation of Amgen’s EP 3 666 797 B1, a patent attorney requested access to all submissions and evidence filed – initially on behalf of his unnamed client, later on behalf of himself – in order to “form an opinion on the validity of the patent under consideration”.
The decisions
The Court rejected both applications stating a respective lack of any legitimate reason for making the requested documents available.
It argued systematically by pointing out how 262 RoP calls for decisions and orders to be published while written pleadings and evidence explicitly require a “reasoned request”. This is also backed up by looking at previous drafts of the rules where there had been an automatic publication of all documents. The current RoP, however, deviate from this earlier approach, highlighting the legislator’s intent to not treat all court files equally in terms of third-party requests for access. It thereby also strengthened the importance of Art. 58 UPCA, which serves to protect confidential information where necessary.
Moreover, the Court clarified that the reason for access pursuant to 262 RoP must be “concrete, verifiable and legally relevant”, a standard which none of the third parties’ reasons given (educational and training purposes or forming a personal/professional view about the validity of the patent) were able to satisfy.
Finally, access to other than submissions and evidence (e.g. the Letter of the Service on the Patent Proprietor) does not even have a legal basis because these documents do not fall under any of the type of documents available via Rule 262 RoP.
Comment
The decisions are soundly reasoned but form a very high hurdle to gain access to party pleadings, even in revocation proceedings. They underscore how UPC case law will evolve autonomously, relying on the UPCA and the rules, also in light of differing practices e.g. in proceedings before the EPO or national courts.
Practitioners in the EPO who are used to full transparency in revocation proceedings and unlimited access to the parties’ submissions and filed exhibits will need to adapt to this stricter law applied in the UPC. And indeed, also countries such as Germany, which do not have a public register where all submissions in revocation proceedings are available but require a request to the court for inspection of the court file, grant access to the file more leniently. The German Federal Patent Court, for example, will grant access to the court file upon request (in which the applicant does not even have to give a reason), if a party to the proceedings does not raise specific trade secrets or other reasons for confidentiality. And in case trade or business secrets can actually be pointed to, access only to that information will be barred, not access to the whole file.
The wording of 262 RoP is quite straightforward, showing that barring access to all but decisions and orders of the UPC is supposed to be the rule and third parties should have a (legitimate) reason to gain access. This is also clear from the wording of the decision, following which it is likely that the Court would have refused the application even if the Claimant in the revocation action would not have opposed it. If „training and educational purposes“ would satisfy this requirement of a „reasoned request“, access to pleadings and evidence would be the rule, though, so the decision of the UPC does not come as a total surprise. The court emphasises that the request should enable the court to analyse for itself whether for example interest of third parties might be impaired by granting access to the pleadings or whether an abuse of evidence could arise (Art. 58 UPCA).
The position the UPC takes in the decisions discussed here thus seems more similar to the practice of the German infringement courts, where for a file inspection, the applicant has to show a legal interest and where parties cannot only rely on trade secrets to argue against access. Purely commercial or social interests are not sufficient.
The question remains, though, what such „concrete and verifiable“ reason might be following which the UPC would grant access to party pleadings and evidence. As shown in the Sanofi case, according to the court it is also not sufficient to point to one’s own or an unnamed client’s wish to consider the validity of the patent, either. Would it then be sufficient to say that one was acting for a client who feels threatened by the patent in question and wants to file its own revocation action? Would it be necessary to disclose who that client is? Should it be even required to state that one feels threatened by the patent or should it be sufficient to say that one requests access to the revocation action and evidence filed therewith to prepare an own challenge to the patent?
The Sanofi decision suggests a rather strict approach of the court, given the court opines that “the Applicant can study the patent and its (public) prosecution history as well as the prior art without access to what the parties to the proceedings have submitted.” However, there might be prior art searched by parties to the revocation proceedings, which was not yet part of the examination or a previous opposition and from which a third party which contemplates filing an own nullity action might benefit. Thus, the UPC seems to weigh the interests in protection of their work product of parties having conducted their own prior art search higher than the commercial interest of third parties in saving money and not having to redo work done by another revocation plaintiff. Based on the position of the court it seems questionable whether it would even suffice for a concrete party to state that it contemplates or wants to file its own revocation action. The court could still point to the fact that it could and should just do its homework itself. Whether this position is not too strict remains to be seen. After all, 262 RoP merely requires a “reasoned request”, not an own legal interest of the applicant.
Under German law, the courts assume that there is a public interest in the register being free of invalid protective rights. Considering that usually evidence in revocation proceedings is publicly available information, anyway, there also is less possibility for trade secrets being revealed by granting access to the file. File inspection requests in revocation proceedings are therefore granted as a rule. Also, given the erga omnes effect of a revocation decision, a statement of claim filed by a nullity plaintiff also has an impact that goes beyond an inter partes relationship, so commercial interests of a claimant having paid for drafting the action are not considered a reason not to grant access to it. Interestingly, the UPC in the Sanofi case explicitly rejects this point, too, arguing that “the general public can likewise inform themselves based on other sources than the pleadings and evidence filed in this action.” It might also have had an impact that the judge rapporteur in both cases, Mr. Kupecz, is from the Netherlands where file inspection is also not granted.
It thus remains to be seen which position the UPC Court of Appeal will take in this situation. According to unconfirmed information, at least one of the decisions has already been appealed.
Footnote
1. Dr Stephan Neuhaus; Jan-Willem Prügel
