Reverse burden of proof and trade secrets in patent litigation – Part two


In my previous post (here), I discussed the reverse burden of proof on an international level and the potential tension which could emerge between the patent and trade secrets regimes in this context. In this post, I will turn the focus to Europe and discuss the regional provisions as well as the relevant provisions of the UPC Agreement.

The Enforcement Directive and the Trade Secrets Directive

There are a few provisions in the Enforcement Directive on confidentiality in court proceedings. The need to preserve confidentiality in intellectual property litigation is recognized in the recital of the directive (Recital 20). In addition, a few provisions (Arts. 6 (2), 7 (1) and 8 (2) (e)) of the directive deal with the protection of confidential information in IP litigation.

The drafters of the directive have recognized the need to protect the confidential information of the adverse party. But what is to be noted is that the Enforcement Directive does not contain any provision on the reverse burden of proof in patent litigation, or the protection of trade secrets in these situations.

The Trade Secrets Directive includes a specific provision (Art. 9) on the protection of trade secrets in litigation concerning the unlawful use or disclosure of a secret (See my post on trade secret litigation here). Ergo, said provision is not applicable in patent litigation. However, Art. 9 of the Trade Secrets Directive could provide for certain general examples of how trade secrets could be protected in patent litigation. These include restricting access to documents, restricting access to hearings, and providing non-confidential versions of judgments. There should for example be no immediate obstacle for a national legislator to include similar provisions in national laws.

The unitary patent and the UPC Agreement

The attempts to create a patent with unitary effect started already in the 1970s. It’s been a quite bumpy road to say the least and it remains to be seen if the efforts bear fruit this time around. In this context, it could be noted that already some of the European legal instruments in the past (which never became effective) already included a provision on the reverse burden of proof.

In conjunction with the regulations on the unitary patent, the UPC Agreement on the Unified Patent Court (“UPC”) has been drafted. The UPC Agreement contains a provision on the reverse burden of proof and the protection of trade secrets (Art. 55 (3)) which is almost identical with the relevant provision in TRIPS (Art. 34 (3)). Inter alia in light of the doctrine of consistent interpretation it appears sensible to interpret the provision of the UPC Agreement in a similar manner as the relevant provision in TRIPS. The UPC Agreement is also an international agreement, which is why Art. 31 of the Vienna Convention should be resorted to as a general guideline when it comes to interpretation of the agreement. For a discussion on TRIPS Art. 34, please read my previous post and the more detailed EIPR article on the subject (here and here).

Nevertheless, it should be noted that the UPC Agreement gives EU law primacy and has its own rules on applicable law (Arts. 20 and 24 of the UPC Agreement). Hence, even though Art. 34 of TRIPS is a good point of departure also in the interpretation of UPC Agreement, it is not necessarily the primary or only legislative instrument resorted to by the UPC in the future. The UPC will of course develop its own case law containing more specific guidelines on the application of said article. In light Art. 20 of the UPC Agreemet, it would for example seem logical for the court to resort to the Trade Secrets Directive for definitions and other guidance when considering a question of trade secret protection. Of course only time will tell how the UPC will interpret and apply Art. 55 (3) of the UPC Agreement in practice.

Interested in a more detailed analysis?

I have discussed the above questions in greater detail and provide some guidelines in my recent article in the European Intellectual Property Review (EIPR) (Issue 5): “Reverse Burden of Proof and the Protection of Trade Secrets in European Pharmaceutical Patent Litigation: Part Two”. For those interested in the subject, I warmly recommend you to read my article. Here’s a link to the article on Westlaw:

Vilhelm Schröder

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