Dr Carolyn Haywood

May 2024

On 24 April 2024, in case UPC_CFI_316/2023, the UPC’s Paris Central Division granted Nicoventures Trading Limited access to written pleadings and evidence in a patent revocation case brought by NJOY Netherlands B.V. against Juul Labs International, Inc concerning EP3430921.

By way of background, NJOY Netherlands B.V. (claimant) brought a revocation action against Juul Labs International, Inc. (defendant) at the UPC’s Paris Central Division with respect to European patent EP3430921.

Nicoventures Trading Limited is a party to parallel EPO opposition proceedings however the claimant, NJOY Netherlands B.V., is not.

On 15 November 2023, Nicoventures Trading Limited filed a request pursuant to Rule 262.1(b) Rules of Procedure seeking access to written pleadings and evidence submitted by both parties and identified in the Case Management System (CMS). Nicoventures Trading Limited also sought access to any further materials submitted to the UPC but not yet visible through the CMS as well as access to documents which are visible in the CMS, but which were generated by the Court.

Consideration of the request by the UPC’s Paris Central Division was initially stayed pending the Court of Appeal’s decision in Ocado v AutoStore. However, once the decision in Ocado v AutoStore was handed down on 10 April 2024 (UPC_CoA_404/2023 APL_584498/2023), the UPC’s Paris Central Division promptly considered the request.

Rule 262.1 of the Rules of Procedure states 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

(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”

In support of their request, Nicoventures Trading Limited argued that:

• the arguments and evidence presented at the UPC may influence the outcome of the parallel proceedings at the EPO,
• they have a justification to understand how the claimant’s case, and any defendant response, affects their position in the parallel proceedings at the EPO relating to the same patent (for example, any new evidence brought by the claimant may be admissible in the EPO proceedings, while the positions of the defendant in relation to claim interpretation and/or the extent or prior art disclosure may impact on the understanding of the issues under consideration at the EPO),
• as yet, no first instance decision has been reached by the EPO in the pending opposition proceeding meaning the Main Action before the UPC’s Paris Central Division has the potential to affect not just the outcome but the scheduling of the opposition proceedings,
• it would be iniquitous to the principles of natural justice, and to the harmonisation and effectiveness of the European patent system as a whole, to deny parties in EPO opposition proceedings access to relevant material in parallel UPC revocation actions absent a compelling reason, and
• the same reasoning should apply to future documents.

With respect to their request for access to Court-generated documents, Nicoventures Trading Limited argued that:

• there is no justification in the Rules of Procedure that Court-generated documents which fall short of the Decisions and Orders mentioned in Rule 262.1(a) UPC Rules of Procedure should be restricted in principle from wider circulation – the provisions of Rules 262.1(a) and 262.1(b) UPC Rules of Procedure were intended to cover the documents of the register exhaustively, and
• the phrase “lodged at the Court” should be taken to include documents generated by the Court itself, or the Court should use its discretion to make such documents available via a procedure analogous to Rule 262.1(b).

The defendant i.e. the Patent Proprietor (Juul Labs International, Inc) objected to the request, noting that (i) the wording of  Rule 262 of the Rules of Procedure indicates a clear intention not to give access to the public to documents generated by the Court, (ii) the applicant has not provided a reasoned request as is required and (iii) Rule 262.1(b) only concerns lodged materials and not future materials and that the applicant can obtain the information they want from other sources.

The claimant i.e. NJOY Netherlands B.V. objected to the request only in so far as it relates to future materials.

The decision of the UPC’s Paris Central Division

With respect to Nicoventures Trading Limited’s request for access to written pleadings and evidence submitted by both parties and identified in the Case Management System, the Court started by recognising the need to balance the interests of the public in gaining access to the written pleadings and evidence with the interests mentioned in Article 45 UPCA which states:

“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.”

In the present case, the applicant seeking access was deemed to have a special interest due to their involvement in parallel EPO opposition proceedings and thus the balance was found to be in their favour. Accordingly, immediate access to the written pleadings and evidence was granted, with the Court recognising that were access to the file granted only after the decision in the revocation action, the applicant may not be able to use the information in the EPO proceedings due to timing issues.

The Court also noted that revocation actions generally concern public interest to a higher degree than infringement proceedings on the basis that the public has an interest in the revocation of patents that do not meet the requirements for protection and constitute an unjustified impediment to competition.

Although prevailing with respect to written pleadings and evidence already on record, Nicoventures Trading Limited were less successful when it came to court-generated documents and future documents.

With respect to the former, the UPC’s Paris Central Division noted that there is no legal basis in the Rules of Procedure stipulating that court-generated documents, which cannot be considered to be decisions and orders, should be made public. As such this request was denied.

With respect to the latter, the UPC’s Paris Central Division noted that there is no legal foundation for granting access to documents which are not yet published in the CMS. Again, Nicoventures Trading Limited’s request in this regard was thus denied.

Overall conclusions

The present decision may indicate a shift, in favour of the public, in the way that requests under Rule 262.1(b) are considered following the guidance in Ocado v AutoStore, especially with respect to revocation actions and where the access-seeking party is a party to parallel opposition/appeal proceedings before the EPO. Accordingly, parties to UPC proceedings should bear this in mind when filing their submissions.

Schlich will continue to monitor developments within the UPC space and report interesting developments as they arise.