Key takeaways
Scope of disclosure in the inspection and preservation proceedings (Art. 58 UPCA)
A three-step test governs the scope of disclosure of a detailed description to an applicant in inspection and preservation proceedings (Art. 58 UPCA) – Continuing of earlier LD Düsseldorf decision (UPC_CFI_539/2024, November 19, 2025, headnotes 1–3 – Bekaert v. Siltronic).
First, it must be assessed whether information constitutes a trade secret, third-party personal data, or other confidential information. Second, confidential information irrelevant to infringement must be redacted. Third, where confidential information relates to the question of infringement and/or acts of use, a decision must be made on a case-by-case basis, as to whether it should be disclosed to the applicant, who would then be obliged to maintain confidentiality vis-à-vis third parties, or whether the applicant’s access to such information should be restricted to a specific group of persons.
Relevance of confidential information to the issue of patent infringement
Information that the expert actually relied on in the detailed description when examining patent infringement is generally considered relevant. It is for the respondent, who invokes the need for redaction, to demonstrate that this is not the case for certain information in exceptional circumstances. In doing so, the respondent may not rely on the argument that patent infringement could have been adequately assessed on the basis of other information.
Where, by contrast, the matter concerns information that the expert did not rely on when examining the question of infringement, it is for the applicant to demonstrate its relevance. If the expert has quoted extensively from documents when drawing up the detailed description, and the applicant nevertheless seeks disclosure of these documents as well, the applicant must also explain why the remaining content of these documents is significant in addition to the detailed description.
The relevance of certain information to patent infringement may also arise from the fact that, while such information is not directly necessary for determining whether the subject-matter falls within the scope of the patent claim, it is necessary for understanding the explanations as a whole.
A finding of non-infringement in the expert report does not bar disclosure to the applicant (R. 196.2, R. 199.2 RoP)
The purpose of inspection/preservation proceedings includes enabling the applicant to independently decide whether to bring main or provisional proceedings; it is not limited to conclusively resolving disputed questions between the parties.
“Outside-Attorneys-Eyes-Only” restrictions are generally rejected in favor of a confidentiality club, absent the opposing party’s consent (R. 262A.6 RoP)
At least one natural person on the applicant’s side must retain access to safeguard the right to a fair trial. Complete exclusion of all natural persons on a party’s side requires the other party’s agreement.
Division
LD Düsseldorf
UPC number
UPC_CFI_1696/2025
Type of proceedings
Inspection and preservation of evidence (release of detailed description / protection of confidential information)
Parties
Applicant:
Topsoe A/S (Kgs. Lyngby, Denmark)
Respondents:
SYPOX GmbH (Freising, Germany)
Josef Kerner Energiewirtschafts-GmbH (Dollnstein, Germany)
Patent(s)
EP 3 802 413
Body of legislation / Rules
Art. 58, 60 UPCA, R. 196 to 199 RoP
