Confidentiality in Ex Parte Inspections: Four Parallel Munich Orders
The Munich Local Division clarifies the scope of confidentiality obligations during ex parte evidence preservation. Four parallel orders establish that an applicant's representatives must be bound to confidentiality, even for products inspected at a public trade fair.
When the Unified Patent Court orders ex parte evidence preservation under Article 60 UPCA, confidentiality obligations must extend to the applicant's representatives attending the physical inspection, even if the targeted product is displayed at a public trade fair.
In four parallel orders (UPC-CFI-0001747/2026, UPC-CFI-0001746/2026, UPC-CFI-0001752/2026, and UPC-CFI-0001751/2026), the Munich Local Division addressed a critical gap in the execution of provisional evidence preservation. The orders, which involve the same parties and a shared factual matrix concerning two patents, clarify the baseline protections required when a competitor's product is dismantled without prior notice.
Why did the Munich Local Division amend its own inspection orders?
The dispute arose after the applicant obtained ex parte orders to inspect and seize a tap changer exhibited by the defendant at the CWIEME trade fair in Berlin. The original orders permitted the applicant's legal and patent attorneys to attend the physical inspection. While the orders explicitly bound the court-appointed expert, the assisting persons, and the bailiff to maintain confidentiality regarding any confidential information uncovered, they omitted the applicant's representatives.
Following the execution of the measures, the defendant filed a request for review under Rule 197.3 RoP. The defendant argued that an acute protection gap existed because the applicant's representatives were not subject to a court-ordered confidentiality obligation concerning the physical inspection itself. The Munich Local Division agreed, acknowledging that the omission was an oversight. The panel amended the orders to explicitly bind the applicant's representatives to confidentiality regarding any insights gained during the inspection and preservation process.
Does exhibiting a product at a trade fair destroy its confidentiality?
The applicant opposed the amendment, arguing that the tap changer was publicly exhibited on a trade fair stand, implying that any confidentiality had already been lost. The Munich Local Division rejected this premise based on the physical realities of the exhibition.
The panel noted that photographs from the trade fair stand showed the device located behind Plexiglas and enclosed in a housing. These physical barriers prevented unrestricted public access to the inner workings of the tap changer. Because the internal components were not freely visible to the public, the Court found that confidentiality interests regarding the technical properties of the device were not excluded from the outset.
Must a defendant prove specific confidential information during a Rule 197.3 RoP review?
A central procedural question across these four orders was whether a defendant must substantiate specific confidentiality interests to secure protection after an ex parte measure has been executed. The applicant argued that the defendant's request was unsubstantiated because it failed to identify concrete confidential information.
The Munich Local Division dismissed this requirement. The panel held that under Article 60(1) UPCA and Article 60(5) UPCA, the protection of confidential information is a mandatory prerequisite for ex parte measures. Unless confidentiality interests are obviously non-existent, protective measures are required.
Crucially, the Court explained that during a Rule 197.3 RoP review, a defendant cannot be expected to catalog every conceivable piece of confidential information. The physical dismantling of a product may reveal technical details that are entirely irrelevant to the question of patent infringement but highly sensitive to the defendant. Because the defendant does not know exactly what the applicant's representatives observed during the inspection, requiring concrete proof of specific confidential information at this stage would be procedurally unfair and contrary to the protective purpose of the rules.
How do these parallel orders shape the role of the court expert?
Beyond the confidentiality gap, the orders also formalised boundaries around the court-appointed expert. Following an agreement between the parties during the oral hearing, the Munich Local Division incorporated specific behavioral mandates into the final orders.
The applicant and all persons acting on its behalf are prohibited from communicating with the expert regarding the inspected object or the pending report. Furthermore, the expert is barred from conducting any follow-up investigations on the seized tap changer. The object must remain in the exact condition it was in upon completion of the initial report, unless the Court in subsequent proceedings on the merits formally appoints the expert and orders specific further analysis.
What must practitioners ensure when executing ex parte inspections after these orders?
These parallel orders establish that the physical presence of an applicant's representatives at an inspection carries inherent informational risks that must be managed by the Court. For applicants seeking evidence preservation under Article 60 UPCA, it is prudent to proactively include comprehensive confidentiality obligations for all attending representatives in the draft order. Relying solely on the confidentiality regime governing the final expert report is insufficient, as the physical inspection itself exposes the representatives to the competitor's internal technology.
For defendants subjected to ex parte measures, these orders confirm that Rule 197.3 RoP provides a robust mechanism to retroactively close confidentiality gaps. Practitioners defending against such measures should immediately review the scope of the non-disclosure obligations. If the applicant's representatives are not explicitly bound, a review request can secure this protection without the immediate burden of identifying and proving the specific confidential information that may have been exposed.
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