2026-08-26 - LD Düsseldorf - Topsoe v. Sypox et al. - UPC-CFI-0001696/2025

1. As the Düsseldorf Local Division has already stated (UPC_CFI_539/2024, Order of 19 November 2025, Headnotes 1–3, para. 28 et seq. – Bekaert v. Siltronic), the following assessment must be carried out to determine the scope of the disclosure of the detailed description to the applicant: a) The first step is to establish whether the information or evidence constitutes or contains trade secrets, personal data relating to third parties, or other confidential information. b) If this is the case, as a second step, this information must be redacted if it is irrelevant to the question of patent infringement or acts of use. c) 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 visà-vis third parties, or whether the applicant’s access to such information should be restricted to a specific group of persons (third step). 2. With regard to the relevance of confidential information to the question of patent infringement (second step), the following applies: a) Information which the expert has actually relied on in his 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 the patent infringement could have been adequately assessed on the basis of other information. b) Where, on the other hand, the matter concerns information which 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. c) The relevance of certain information to patent infringement may also arise from the fact that, whilst 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.

The Düsseldorf Local Division ruled on the release to the applicant of the court experts' detailed description drawn up after an inspection and preservation-of-evidence measure, against the respondent's asserted confidentiality interests under Art. 58 UPCA. Confirming its own earlier order in Bekaert v Siltronic, the Court applied a three-step assessment: whether the material is a trade secret, third-party personal data or other confidential information; if so, redaction where it is irrelevant to infringement or acts of use; and, where relevant, a case-by-case choice between disclosure under a confidentiality undertaking and restriction of access to a defined group of persons. On the relevance step the Court allocated the burden: information the expert actually relied on is presumed relevant and the respondent must show an exception, while the applicant must justify material the expert did not use; the objection that infringement could have been assessed on other information is excluded, because entertaining it would amount to the substantive infringement assessment that the release procedure does not perform. The Court held that release does not depend on whether the detailed description concludes that the patent is infringed, since the purpose of the procedure includes enabling the applicant to decide whether to bring an action at all. Attorney-Eyes-Only was refused as contrary to the principle in R. 262A.6 RoP that at least one natural person of each party must obtain access.