The protection of confidentiality of exhibits in French civil proceedings

In France, parties have the sole power to delimit the scope of the disputes brought before the courts. In the absence of discovery proceedings, they are also tasked with providing the evidence to back up the demands brought before the courts. The judge may however take any legally admissible measure that appears necessary to the dispute at hand (such as requesting an expert’s opinion or compelling the parties to provide certain exhibits).

The question of the confidentiality of documents requested by the judge or the parties can arise.

No specific provisions used to exist under French law to safeguard the confidentiality of documents during intellectual property proceedings, apart from the specific case of the saisie-contrefaçon (infringement seizure).

In the absence of specific provisions, practitioners used so-called ‘confidentiality circles’ to guarantee that confidentiality would be upheld, until the recent French law on trade secrets which provides new tools in that regard.

The situation prior to the new law

No specific provision, with the exception of the saisie-contrefaçon

There are no specific provisions in intellectual property case law regarding the protection of confidential information.

The saisie-contrefaçon is an evidentiary measure provided for under French law, by article L.615-5 of the French Intellectual Property Code (IPC). A patentee is allowed by a judge to enter the premises of the alleged infringer with a bailiff (and in most cases by technical experts), in order to access and/or make a copy of products or documents that will help the patentee prove infringement has taken place.

The risk to the alleged infringer’s confidential information is thus high, especially given that they have not yet been found to be an infringer.

During the saisie-contrefaçon, the case law allows for the alleged infringer to ask the bailiff to black-out some information from the seized documents, or to seal seized products.

After the saisie-contrefaçon, should the alleged infringer party realise that some seized material, which has not been marked as confidential during the saisie-contrefaçon, actually is, the IPC provides that it may ask the judge to take any measure aimed at preserving the confidentiality of this seized material. This must be asked of the judge soon after the saisie-contrefaçon has taken place to be effective in practice.

The main idea is to have a respectful and proportionate approach regarding such ex parte proceedings (Paris Court of First Instance, Preliminary injunction, 5 October 2018, n°18/07140).

This question of confidentiality of exhibits does not only arise during saisie-contrefaçon proceedings and is also asked during proceedings on the merits.

Taking matters into the parties’ own hands

In practice, parties started to draft ‘confidentiality circles agreements’, which are aimed at providing the conditions under which confidential information necessary to the proceedings is shared and used.

The main advantage of these confidentiality agreements is their flexibility. It allows the parties to choose the people who will have access or not to the confidential information.

A question that may sometimes arise is: what happens when the parties disagree on the identities of the people to be included in such a confidentiality agreement?

In a case before the Paris Court of Appeal, one party wished to include their Canadian attorneys-at-law in the confidentiality circle, which the other party refused. The former thought that the inclusion of the Canadian attorneys-at-law was appropriate, given that the same infringement proceedings were currently held in Canada and that the French ruling would have an influence on those proceedings.

Thus, it asked the court to order the refusing party into the confidentiality agreement, which would include these Canadian attorneys-at-law.

The court refused, ruling that it was not required to order any party to enter into a specific confidentiality agreement, ‘given that contracts are ruled by the principle of consensus’. As such, it was ruled unnecessary for the foreign attorneys-at-law to be included in this confidentiality circle .

While these confidentiality circle agreements are efficient, they appeared to still be dictated by the lack of legal tools to maintain the confidentiality of exhibits during civil proceedings.

The new provisions included in the French Commercial Code by the recent law on the protection of trade secrets seem to have armed the parties and courts with new tools to protect their trade secrets in the course of civil proceedings.

The provisions of the new French law on trade secrets

What the new law provides for

This new law offers the judge several legal possibilities to maintain the confidentiality of the parties’ trade secrets over the course of proceedings.

Mostly, article L.153-1 of the French Commercial Code provides that the judge, when a party asks for the production of an exhibit that the other party deems confidential, has certain powers. The judge may:

  • decide to examine the exhibit alone and, if necessary, order an expert’s report to assess whether or not the exhibit is confidential. In such proceedings, each party may designate one person allowed to examine the exhibit and make observations regarding its confidentiality;
  • decide to restrict access to parts of certain exhibits, order the concerned party to provide a summarised version of these exhibits or limit access to the exhibit to one person for each party;
  • decide that the debates regarding such an exhibit will be held in chambers; and
  • adapt the decision that will be handed down and its publicity in order to protect the confidentiality of a party’s trade secrets.

Article L.153-2 of the French Commercial code provides that any person authorised to access an exhibit deemed to contain or potentially contain trade secrets by the judge is subject to a strict confidentiality requirement. This obligation survives the proceedings.

A decree was issued in December of 2018 to provide more precision with regards to these articles, including notably the impossibility for anyone allowed to examine an exhibit to make a copy of it.

The analysis of recent case law as an illustration

A recent case relating to a fair, reasonable and non-discriminatory (FRAND) offer, and standard essential patents, serves as a good illustration of this law’s new provisions. The Paris Court of Appeal took several measures, on the basis of this new law, to protect the trade secrets of the parties (Conversant Wireless v LG Electronics [2019]).

These measures were notably taken to maintain the confidentiality of licence contracts, which were requested by the plaintiff. Pursuant to article L.151-3 of the French Commercial Code, they included:

  • restricted access to certain exhibits, including the aforementioned licence agreements. Only the parties’ avocats, the court and third parties bound by a confidentiality agreement are allowed them;
  • the possibility for the parties to provide two versions of their written submissions: one fully references the confidential agreements, while the other does not. The court asked the parties, in the first version of their submissions, to highlight the confidential parts that are to be avoided in the court’s decision; and
  • a calendar for the upcoming hearings. Some were to open to the public, but others, during which the confidential documents’ content was going to be discussed, were to be held in chambers. A list of people allowed to attend these hearings in chambers was drawn up.

This case illustrates the fact that confidentiality is taken into consideration more and more by French courts, which now have legal tools to maintain it while still being at liberty to rule efficiently on the cases submitted to them.

Founded in 1898, LAVOIX covers all areas of intellectual property (IP). With nearly 200 professionals dedicated to IP, including 80 attorneys-at-law, industrial property attorneys, technology specialists and lawyers, LAVOIX is one of the leading European firms in the field. Established in France with headquarters in Paris and seven branch offices across France, LAVOIX also has offices in Germany (Munich), Italy (Milan) and Grand Duchy of Luxembourg (Luxembourg).