At the request of a party, the court can classify the information in question as confidential. This has the effect that the parties and all other participants in the proceedings must keep the information in question confidential and are prohibited from using or disclosing it outside court proceedings unless they have learnt of it outside the proceedings. In addition, the court can restrict access to information or documents classified as confidential to certain reliable persons.
The Dusseldorf Higher Regional Court (Oberlandesgericht [OLG] Düsseldorf) recently dealt with the requirements for such procedural non-disclosure orders (decision dated November 3, 2022, case number 2 U 102/22, published in GRUR-RS 2022, 3458).
I. Background
The decision concerns non-disclosure orders in patent infringement proceedings. Upon request of the defendant, the first instance court had classified certain information as confidential and restricted access to the information to certain persons. The plaintiff appealed the access restriction order.
II. Decision
The Dusseldorf Higher Regional Court (hereinafter only “Court”) lifted the access restriction order.
1. Principles
The German Trade Secrets Act provides that the court can classify information that is part of the proceedings as confidential if the information in question may constitute a trade secret. For access restriction orders, the German Trade Secrets Act additionally requires that the requesting party’s interest in the desired access restriction outweighs the other participants’ rights to be heard, to effective legal protection and to a fair trial.
According to the Court, there must be concrete circumstances to justify both a classification of information as confidential and an access restriction order. The fact that the information in question may constitute a trade secret is not enough.
2. Decision in the case
The Court did not find the access restriction order justified in the case. (The Court did not decide on the first instance court’s classification as confidential, because the plaintiff had appealed only the access restriction order.)
The Court based its opinion on a pre-court confidentiality agreement between the plaintiff and the parent company of the defendant. The confidentiality agreement had been concluded in the context of licensing negotiations. It provided that the information subject to confidentiality agreement may only be used for the purpose of the licensing negotiations and may only be made accessible to employees, consultants and representatives of the contracting parties and the respective affiliated companies that are subject to a corresponding duty of confidentiality.
The Court stated that there is no need for a procedural non-disclosure order if the possible trade secrets concerned are already protected by a pre-court confidentiality agreement, at least if the other party to the confidentiality agreement has not breached it. In such circumstances, according to the Court, a procedural non-disclosure order requires reasons to believe that and why the sanctions and penalties in case of a breach of the confidentiality agreement are not sufficient and/or reliable enough to ensure the protection of the trade secrets concerned in legal proceedings.
Furthermore, the Court stated that a procedural access restriction order that deviates from or goes beyond a pre-court confidentiality agreement in terms of access restrictions or duration is not justified unless the party requesting the order presents reasonable grounds for why an additional procedural access restriction order is necessary nevertheless.
The Court considered the fact that the licensing negotiations in the case at hand, with regards to which the confidentiality agreement had been concluded, had stopped irrelevant. In the opinion of the Court, it could be assumed that the plaintiff’s infringement action also served the purpose of resuming the negotiations or encouraging the defendant’s willingness to continue them. Thus, information on licensing negotiations presented in the infringement proceedings were still subject to the confidentiality agreement and did not require additional protection by a procedural access restriction order.
Finally, with regard to the limited term of the confidentiality agreement at hand, the Court noted that the defendant could still apply for a procedural access restriction order regarding information presented in the infringement proceedings for the first time after the confidentiality agreement has expired.
An appeal against the decision of the Court is not possible.
III. Outlook
It is uncertain whether other German courts will share the Dusseldorf Higher Regional Court’s restrictive approach. To be on the safe side, parties to a confidentiality agreement should include a provision regarding procedural non-disclosure measures in the event that confidential information become part of court proceedings.
