Key takeaways
Three-step test for determining the scope of the disclosure of the detailed description to be prepared by an expert (confirmation of UPC_CFI_539/2024)
Step 1: Does the information in question constitutes a trade secret, personal data, or other confidential information (Art. 58 UPCA)?
Step 2: Is the information irrelevant for the question of infringement? If so, this information must be redacted.
Step 3: If the information is relevant for the question of infringement: decision must be made on a case-by-case basis as to whether applicant has confidentiality obligation towards third parties or whether access is restricted to a specific group (Confidentiality Club).
Burden of proof regarding the relevance of confidential information to the question of patent infringement
Information actually relied on by the expert: Generally considered relevant and the respondent must demonstrate irrelevance and cannot rely on the argument that infringement could have been assessed on the basis of other information.
Information not relied on by the expert: Applicant must demonstrate relevance.
Contextual relevance: Information may be relevant even if not directly necessary for claim analysis, provided it is necessary for understanding the expert’s reasoning
Division
Local Division Düsseldorf
UPC number
UPC_CFI_1696/2025
Type of proceedings
Inspection and preservation of evidence; decision on disclosure of the detailed description
Parties
Claimant: Topsoe A/S
Defendants: SYPOX GmbH and Josef Kerner Energiewirtschafts-GmbH
Patent(s)
EP 3 802 413 B1
Jurisdictions
UPC
Body of legislation / Rules
Art. 58, 60 UPCA
R. 194(d), 196, 197, 199, 262A RoP
