Don't remain a fool forever – information and accounting under the UPCA
As the proverb has it: Those who do not ask questions remain a fool forever. But does asking questions prevent you from being a fool under the provisions of the Unified Patent Court Agreement (UPCA) that stipulate rules on the disclosure of information?
Article 67 UPCA regulates the power of the Court (Unified Patent Court, UPC) to order, upon a justified and proportionate request, the communication of information by the infringer (para. 1) or, under certain conditions, by a third party (para. 2):
Such an order is already part of the decision on the merits of the main proceedings if a corresponding request is made. The information to be communicated does not differ significantly from that to which a claim also exists under Sec. 140b German Patent Act. What is new and noteworthy from a German perspective is that the request must be justified and proportionate according to the wording of Article 67 UPCA. Neither the UPCA nor the Rules of Procedure of the Unified Patent Court (RoP) make any further specifications in this respect. However, it seems possible that the applicant must show that the information to be communicated is essential and advantageous for their case (Rule 191 RoP: “reasonably necessary for advancing that party’s case”). The aim of the order under Article 67 UPCA is to identify the distribution channels to enable access to further infringers. The communication of information includes not only information on the infringing product but also information on the infringing process, which is not covered by German law even though the wording of Sec. 140b(1) German Patent Act suggests it. The only provision on the communication of information in the RoP, which supplements Article 67 UPCA, is found in Rule 191 RoP and concerns, inter alia, the protection of information subject to secrecy.
In addition to the general regulatory content, another feature which Article 67 UPCA and Sec. 140b German Patent Act have in common is that the communication of information on profits and costs is not stipulated. Under German law, the infringed party is entitled to accounting on the basis of the principles of good faith (Secs. 242, 259 German Civil Code). The UPCA, however, does not provide for such a rule. It seems rather unlikely from the current point of view that, in future practice, the Court will order the rendering of accounts in addition to the communication of information based on Article 67 UPCA due to its clear title and its unambiguous content, even if the calculation methods of a claim for damages laid down in the following Article 68 UPCA presuppose the rendering of accounts.
The infringed party, however, is not in the dark even without the rendering of accounts when they want to calculate damages. If the infringed party "asks" further, they can even be granted access to the infringer’s books by an order to disclose books (Rules 141-144 RoP) during the subsequent procedure for the determination of damages and compensation (Rules 125 et seqq. RoP). Under German law, this possibility does not exist due to a ruling of the Federal Court of Justice (cf. BGH, GRUR 1984, 728 - Dampffrisierstab II) and the infringed party is limited to the accounting provided by the infringer.
Even though the order to disclose books is not set out in the UPCA itself, but only in the RoP, these provide a sufficient basis for the assertion of such a request (cf. Article 41(1) UPCA). The request for an inspection of records – if filed – is part of the two-step damages award procedure (cf. Rule 126 RoP) and has to be filed with the request for the determination of damages pursuant to Rules 141 RoP and 131.1 lit. c RoP. The further substantive requirements of such a request – which must include, inter alia, a substantiation for the need to gain access to the relevant information – can be found in Rule 141 RoP.
The infringer may either submit to the request or oppose it, which initiates a written procedure with written pleadings – at least defence, reply and rejoinder – following a fixed time regime under the direction of the judge-rapporteur (cf. Rules 142 RoP and 143 RoP). At the end of the written procedure, the Court decides on the request and, if they grant it, sets terms and conditions – such as the protection of confidentiality interests – to be applied to the inspection of records, in addition to a time limit for fulfilment (cf. Rule 144 RoP). Irrespective of the Court's decision on the request for the inspection of records, it determines a point in time at which the procedure for the award of damages is to be continued.
Therefore, what has been commonly known for a long time applies here as well: If you take the trouble and keep on asking further questions, you do not remain a fool before the UPC even after the actual decision on the merits in the main proceedings.