IP|Experten: The implementation of Art. 6 and 7 (2004/48/EG) through Sec. 140c of the German Patent Act

by Sebastian Glatzel* and Nikolas Smirra*

Die Expertennotizen von IP|Notiz sollen ein Forum für Experten im sogenannten „Grünen Bereich” und daran angeschlossenen Rechtsgebieten bilden. Unser Ziel ist, damit den öffentlichen Austausch – auch im Medium Internet – in unseren Rechtsgebieten zu fördern und Praxis und Wissenschaft einander anzunähern. Die Transparenz des wissenschaftlichen Austausches für die Öffentlichkeit ist dabei einer der wichtigsten Effekte dieser Reihe.


  1. Introduction

On September 1st 2008 section 140c of the German Patent Act (PatG) came into effect. This provision is part of a series of amendments to German IP related regulations due to the implementation of the IPR Enforcement Directive (2004/48/EG) made under the European internal market provisions. The Directive concerns measures, procedures and remedies necessary to ensure the enforcement of intellectual property1.

Regarding the considerable difficulties that a rightholder may have to prove an infringement or to determine his claim to compensation in the case of a detected infringement, Sec.140c PatG in particular deals with the implementation of Art. 6 and 7, concerning „evidence“ and „measures for preserving evidence“, themselves being compliant with Art.43 (1) and Art.50 (1)(b) of TRIPS. Before the implementation of Sec.140c PatG claims regarding evidence were based on Sec.8092 et seqq. of the German Civil Code. However those provisions were not sufficient to fulfill the requirements of Art.6 of the Directive3. So the new provision to the Patent Act grants the rightholder a claim of examination of alleged infringing objects or processes and guarantees access to relevant documents. Moreover the obligor’s duty to present documents or to tolerate the inspection of an object can be ordered by interlocutory injunction according to the provisions of the German Code of Civil Procedure (ZPO). Sec.140c PatG can be regarded as an addition to Sec.140b PatG, which grants rightholders a demand for disclosure of relevant information about the origin and the channel of distribution of infringing products.

At first glance the German provision bears significant resemblance to the Anton-Pillar-Order (or Search-Order) and the French “saisie contrefacon”. However, due to preculiarities of the German law – especially the law of practice – Sec.140c PatG is far from being without controversy.

  1. Sec.140c PatG

§ 140c Patentgesetz

  1. Wer mit hinreichender Wahrscheinlichkeit entgegen den §§ 9 bis 13 eine patentierte Erfindung benutzt, kann von dem Rechtsinhaber oder einem anderen Berechtigten auf Vorlage einer Urkunde oder Besichtigung einer Sache, die sich in seiner Verfügungsgewalt befindet, oder eines Verfahrens, das Gegenstand des Patents ist, in Anspruch genommen werden, wenn dies zur Begründung von dessen Ansprüchen erforderlich ist. Besteht die hinreichende Wahrscheinlichkeit einer in gewerblichem Ausmaß begangenen Rechtsverletzung, erstreckt sich der Anspruch auch auf die Vorlage von Bank-, Finanz- oder Handelsunterlagen. Soweit der vermeintliche Verletzer geltend macht, dass es sich um vertrauliche Informationen handelt, trifft das Gericht die erforderlichen Maßnahmen, um den im Einzelfall gebotenen Schutz zu gewährleisten.

  1. Der Anspruch nach Absatz 1 ist ausgeschlossen, wenn die Inanspruchnahme im Einzelfall unverhältnismäßig ist.

  1. Die Verpflichtung zur Vorlage einer Urkunde oder zur Duldung der Besichtigung einer Sache kann im Wege der einstweiligen Verfügung nach den §§ 935 bis 945 der Zivilprozessordnung angeordnet werden. Das Gericht trifft die erforderlichen Maßnahmen, um den Schutz vertraulicher Informationen zu gewährleisten. Dies gilt insbesondere in den Fällen, in denen die einstweilige Verfügung ohne vorherige Anhörung des Gegners erlassen wird.

  1. § 811 des Bürgerlichen Gesetzbuchs sowie § 140b Abs. 8 gelten entsprechend.

  1. Wenn keine Verletzung vorlag oder drohte, kann der vermeintliche Verletzer von demjenigen, der die Vorlage oder Besichtigung nach Absatz 1 begehrt hat, den Ersatz des ihm durch das Begehren entstandenen Schadens verlangen.

Section 140c Patent Act (Translation)

  1. Whoever uses a patented invention with reasonable probability contrary to Sec. 9-13 Patent Act, may be subject to claims by the rightholder or any other beneficiary to present documents or tolerate the inspection of an object in his control, or a process that is subject to a patent, if it is necessary in order to establish claims. If there is reasonable probability of infringement on a commercial scale, the claim extends to the presentation of banking, financial and commercial documents. The court takes necessary measures to warrant protection in a particular case, if the alleged infringer claims confidentiality of the documents.

  1. The claim according to subsection 1 is excluded, if the utilization is disproportionate in the particular case.

  1. The duty to present documents or to tolerate the inspection of an object may be ordered by interlocutory injunction according to Sec. 935-945 of the german Code of Civil Procedure. The court takes necessary measures to warrant the protection of confidential information. This applies in particular to cases where the preliminary injunction is issued without prior hearing of the opponent.

  1. Sec. 811 of the Civil Code and Sec.140b (VIII) Patent Act apply mutatis mutandis.

  1. Where it is found that there has been no infringement or threat of infringement, the alleged infringer may demand compensation of the damage caused by the demand from the applicant of the presentation or inspection according to paragraph 1

  1. Content of Sec.140c Patent Act

Following requirements have to be met in order to grant the rightholder or any other beneficiary the claim of inspection or the access to relevant documents:

(1) A patented invention has to be used with a reasonable probability contrary to Sec.9-13 Patent Act, which determine all acts preserved to the owner of a patent. This is due to Art.6 of the Enforcement Directive, according to which the provision’s objective is to secure evidence – even before the actual facts of the case are clear. To respect the other party’s interests it is obvious that not any slightest indication can suffice to justify a claim. According to the statement of the German legislator on the occasion of the amendment of the Patent Act the requirement of a reasonable probability was added in order to codify the principles developed by the German Federal Court of Justice in the so called “Faxkarte – Case45. The court decided that a general inspection claim according to Sec.809 Civil Code is substantiated, if a “certain degree of probability” of an infringement is given6.

(2) Second, the presentation of documents or the examination of an object must be necessary. Again this is an abstract legal term, which has to be interpreted. This requirement of “necessity” was included in Sec.140c PatG in order to prevent an abuse of the provision as an instrument for industrial espionage7. Moreover this precondition allows the courts the consideration of the obligor’s interest of non-disclosure in relation to the probability of an infringement or its significance. The “necessity” will be denied by the courts, if at the time of the claim any other, simpler, reasonable and at least equitable possibility to obtain evidence is apparent. In practice this might be the case if an infringement could be substantiated e.g. by inquiries on the internet or by a simple glaze at sales literature or instruction manuals. Even though such a requirement is not comprised by Art.6 or 7, Sec.140c PatG can still be considered as compliant to the Enforcement-Directive in respect of its Art.3.

(3) Additionally subsection (II) excludes claims according to subsection (I) in the case that its utilization is disproportionate in the particular case. By this the principle of proportionality is expressed in Sec.140c PatG. In an exceptional cases the court could reject an extensive claim if the alleged infringement is at the most insignificant.

(4) Concerning the attainment of banking, financial and commercial documents Sec.140c PatG demands for a “second-step-probability-test”. The already “reasonable probable” patent infringement has again to be “reasonable probable” on a commercial scale. However, according to the Directive any act carried out for direct or indirect economic or commercial advantage can be regarded as on a commercial scale8.

Actually it is not apparent why Sec.140c(I)(2) PatG demands the probable use on a commercial scale, since according to Sec.11 PatG most non-commercial acts are anyways excluded from patent protection and regarded as “non-infringing actions”. Sec.140c(I)(1) PatG explicitly refers to the use of a patented invention contrary to Sec.9-13 PatG. Therefore in practice this requirement will only, if at all, prevent the disclosure of the mentioned documents in a negligibly small amount of cases. Almost any use contrary to Sec.9-13 PatG will be on a commercial scale!

(5) If the above mentioned requirements are met, the obligor has to tolerate the inspection of the alleged infringing object or process and has to present relevant banking, financial and commercial documents. However the term inspection as stated by Sec.140c PatG is open to interpretation. This term is also used in Sec.809 of the Civil Code and in its context an interpretation has been developed. And since Sec.140c PatG is part of the implementation of 2004/48/EG the meaning and extend of the term inspection also has to be interpreted in accordance with the Directive’s purpose as well. So, due to the fact that an effective enforcement of intellectual property is intended inspection has to be understood in a broad sense. It encompasses not only reckoning of the object but a comprehensive inspection as well. This includes for example activating machines and also allows intrusion in the object to some extent, e.g. the removal of covers9. So, the inspection of an object includes all measures that in relation to the specifics of the object and in relation to the facts needed can provide certainty about the claim10. Even though only through such a broad interpretation the aim of the Enforcement-Directive can be achieved it has been criticized that the legislator did not expressis verbis regulate the range of the term inspection or substantiated it e.g. by the term examination11.

Moreover the effectiveness of the measures granted by Sec.140c PatG require that the obligor’s business premises can be accessed in order to inspect a relevant object or process. On the other hand the claim for a searching of those premises to investigate if there is any infringement at all cannot be covered by the new provision. In so far the amendment of the Patent Act does not have any effect on the German Federal Courts legal practice developed in its “Kontrollbesuch-Case12”.

(6) Subsection (III) of Sec.140c PatG states, that the claim can be enforced by a interlocutory injunction. But only in the case, that a claimant can adduce a prima facie evidence that the claim for damage is substantiated, as stated by Sec.935 et seqq. German Code of Civil Procedure. Even though this requirement constitutes an additional barrier for the rightholder, Sec.140c(III) PatG is totally compliant with the Enforcement-Directive regarding its Art.9(III). This states that in any case of a interlocutory injunction the judicial authorities have authority to require any reasonable available evidence in order to satisfy themselves with a sufficient degree of certainty that the applicant’s right is being infringed, or that such infringement is imminent.

(6) By referring to Sec.811 German Civil Code, subsection (IV) regulates some modalities of the inspection and the presentation of documents13. Furthermore Sec.140b(VIII) PatG constitutes an exclusion of the obtained evidence for potential subsequent criminal proceedings regarding the same actual situation.

(7) Subsection (V) grants the alleged infringer a demand to compensation against the applicant of the presentation according to subsection (I) in the case that neither any infringement could be proven, nor any threat of infringement is apparent. In practice the damage could e.g. be a loss in production or the opponent’s legal costs.

  1. Points of criticizm

(1) Combining Art.6 and 7 of the Directive

The implementation of articles 6 and 7 of the Enforcement Directive combines both articles with their particular rules into only one section of the German Patent Act. Provisions for taking evidence are blended with those for preserving evidence.14 This leads to difficulties with the interpretation as well as the application of Sec.140c PatG.

Art.6 of the Directive does not require the Member States to provide measures of interlocutory injunctions to guarantee the enforcement of the claim.15 This aspect is covered in Art.7 which provides measures to protect evidence until a decision about a claim according to Art.6 is reached. Evidence may be confiscated through preliminary measures, but it may not be made available to the rightsholder for examination at that point. By combining both articles of the Directive in one section, the German legislator has, however, granted the possibility of a interlocutory injunction for the taking of evidence and not only for the preservation of evidence. That means, that unlike the Directive, a Sec.140c PatG claim would grant the applicant examination of evidence through a preliminary injunction. However, the summary procedure of preliminary disposition according to German law is not fit to provide an adequate examination of proportionality with respect to trade secrets and confidential information. Two principles of German law are thereby at stake. One is the prohibition of the anticipation of the main action by a preliminary action. The second is the principle that the defendant does not need to participate in the taking of evidence. His basic constitutional rights to informational self-determination and to due process of law are at risk.

(2) Safeguards for confidential information

Safeguards for confidential information of the obligor are not set by Sec.140c PatG but are put under the courts discretion. It is, however, the obligation of the legislator to provide, within the statute, measures to balance the interests of the involved parties proportionately. It does not suffice to delegate this decision to the courts.

(3) Searching houses and business premises in order to fulfill the claim of examination may touch on basic constitutional rights as stated in Art.13 Grundgesetz16. Rules of procedure for that case are not provided in Sec.140c PatG or any of the following sections. Sec.140c PatG might therefore be too indeterminate to be constitutional17. A court order for examination within the business premises of the obligor would in practice have to be combined with a search order.18

(4) The requirement of reasonable probability cannot be found in Art.6 of the Directive19. Although the Member States are free to go beyond the purpose of the Directive in their respective implementation, they may not fall behind the protection stated in the Directive. However, any additional requirement for a claim limits the protection for the applicant. Such an additional requirement has to be substantiated and possibly proven in court in order to gain a valid claim according to Sec.140c (I) PatG.

The Directive requires only that the party “has presented reasonably available evidence to support the claim”. That also means, that a claim might be substantiated if no evidence is reasonably available to the rightsholder20. Even if this is limited by the boundaries of misuse of the claim, it still goes beyond the German implementation21.

  1. Sec.140c Patents Act in legal practice

The Landgericht22 Duesseldorf has, in consistent practice, established a form of court orders that allows to balance the interests of the involved parties in examination claims. This practice took the BGH decisions concerning examination prior to the implementation of the Directive into account and is known as the “Duesseldorf Practice”. It will very likely prevail in matters where the new Sec.140c PatG is concerned, because it allows courts to take the required reasonable steps to protect trade secrets and confidential information. A typical court order23 for an Examination according to Sec.140c PatG reads as follows:

I. It is ordered, on application by the applicant of … , because a law suit has not yet been filed and the applicant has a legal interest that the condition of an object is assessed, that independent proceedings for the taking of evidence according to Secs.485 et seqq. Code of Civil Procedures are carried out.

II. 1. By means of expert witness evidence shall be taken, whether the … within the business premises of the opponent of typ “…” are suited to carry out the process according to claim x of the European Patent … , which consists of the follwing… .

2. … is appointed as expert witness.

3. The expert witness is – in order to protect any possible trade secrets of the opponent, that might surface during an examination – ordered to avoid any direct contact with the applicant and to conduct any necessary communication via the court or the designated legal representatives of the applicant. The expert witness is sworn to secrecy against any third party.

4. The examination shall – because of the urgency of the matter – be carried out without prior summoning or hearing of the opponent.

III. By means of interlocutory injunction the following is ordered:

    1. In addition to the expert witness, the follwing legal representatives of the applicant shall be granted presence during the examination.

      • attorney at law …,

      • patent attorney … .

2. Patent attorney … and attorney at law … are sworn to secrecy about any fact about the business of the opponents that might come to their attention during the examination. Especially against employees of the applicant.

3. The opponent is ordered to refrain from – for the duration of the examination from now on – any changes to the … to be examined, especially … .

4. For the case of violation of order 3, a administrative fine of up to 250.000,- Euro – alternatively arrest for contempt of court – or arrest for contempt of court up to six month is ordered. The arrest is enforceable against the CEO of the opponent.

5. The opponent has to tolerate, that the expert witness examines devices and if the expert witness deems necessary to examine it in working condition.

IV. After the written report of the expert witness has been presented to the court, the opponent has the opportunity to claim confidentiality of information. The court will then decide, whether the report is brought to the attention of the applicant.

If Sec.140c PatG is indeed executed like this, most of the aforementioned problems can be resolved.

A court order for an examination on business premises will in most cases resolve problems of basic constitutional rights, that might be touched due to inproportionality of the measure, since the court will take constitutional rights into account in its decision. Moreover Sec.IV of the order resolves problems of anticipating the main action as it bars the applicant from gaining evidence through a preliminary measure. A last remaining issue is the requirement of reasonable probability. The fact that the German implementation might by too narrow at this point cannot be resolved through a court order. It is still up to the applicant to produce enough evidence that will suffice the requirement of reasonable probability of infringement.

*Rechtsreferendar aus Regensburg. Er hat Jura an der Universität Leipzig, der University of Washington in Seattle und der TU Dresden studiert. Er ist Absolvent des LL.M. Studiengangs „International Studies in Intellectual Property Law“ (Seattle/Dresden).

** Doktorand an der Universität Regensburg. Er hat Jura an der Universität Regensburg, der Queen Mary University London und der TU Dresden studiert. Er ist Absolvent des LL.M. Studiengangs „International Studies in Intellectual Property Law“ (London/Dresden).

12004/48/EG, Art.1.

2Section 809 [Inspection of a thing]: „A person who has a claim in respect of a thing against its possessor or wishes to obtain certainty as to whether he has such a claim may, if inspection of the thing is of interest to him for this reason, demand that the possessor presents the thing to him for inspection or permits inspection.“.

3See Tillmann, GRUR 2005, 737.

4BGH GRUR 2002, 1046 – Faxkarte.

5BT 16/5048, p.40.

6BGH GRUR 2002, 1046 – Faxkarte, p.1048.

7BT 16/5048, p.40.

82004/48/EG, preamble (14).

9Dörre/Maaßen, GRUR-RR 2008, 217 (220); Kühnen, Die Durchsetzung von Patenten in der Praxis, 2008, Rn. 162.

10Kühnen, l.c. Rn. 162.

11Stellungnahme zur Umsetzung der Richtlinie zur Durchsetzung des Geistigen Eigentums (15.6.2007), GRUR 2007,765 (766).

12BGH GRUR 2004, 420 – Kontrollbesuch.

13Section 811 German Civil Code [Place of presentation, risk and costs]:

(1) Presentation must […] be made at the place where the thing to be presented is located. Each party may demand to have it presented at another place if there is a compelling reason for doing so.

(2) Risk and costs must be borne by the person demanding presentation. The possessor may refuse presentation until the other party advances the costs and provides security for the risk.

14Peukert/Kur, GRUR Int. 2006, 292 (299).

15Peukert/Kur, GRUR Int. 2006, 292 (300).

16Grundgesetz = German constitution.

17Peukert/Kur, GRUR Int. 2006, 292, 301; Eck/Dombrowski, GRUR 2008, 387, 391; Gemeinsame Stellungnahme der Ausschüsse für Patent- und Gebrauchsmusterrecht, Geschmacksmusterrecht und Uhrheberrecht zum Referentenentwurf für ein „Gesetz zur Verbesserung der Durchsetzung von Rechten des geistigen Eigentums“ (Stand: 3.1.2006), GRUR 2006, 393 (394).

18Nägele/Nitsche, WRP 2007, 1047 (1053).

19Dörre/Maaßen, GRUR-RR 2008, 217 (220); Statement of the BDI regarding the implementation of Enforcement Directive, p.3.

20Nägele/Nitsche, WRP 2007, 1047 (1052).

21However the legislator explicitly states that the implementation is compliant with the Enforcement Directive in matter of this requirement; Gesetzesbegründung BT 16/5048, p.40.

22The Landgericht (~ district court) has in the first instance jurisdiction in all civil litigation, apart from those matters which are assigned to the Amtsgericht (~ municipal court). The states have power to assign all patent disputes to a specialized Landgericht. For the state of Northrhine-Westphalia all patent disputes are assigned to the Landgericht Duesseldorf. The Landgericht Duesseldorf is the most important court for patent disputes in Germany.

23Kühnen, GRUR 2005, 185 (187).

 
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