In order to increase efficiency, the right to seek inspection
according to Sec. 140c of the German Patent Act (PatG) is normally
enforced by means of a preliminary court order. The
"Düsseldorf Practice" assumes that the required
"urgency" is implied by Sec. 140c subs. 3 first sentence
of the PatG. The other requirements for a preliminary court order
need to be submitted and evidenced as usual. Sec. 140c of the PatG
has been introduced during implementation of the Enforcement
Directive. The Enforcement Directive made further changes of the
German Intellectual Property rights necessary, for instance, in the
Copyright Act, where a new Sec. 101a of the Copyright Act was
introduced, which imposes an entitlement to examination that is
almost identical to the provision of Sec. 140c of the Patent
In contrast to the practice of the Düsseldorf Court, the
Appellate Court of Cologne held in a case concerning the right to
inspection under copyright law, that Sec. 101a of the Copyright Act
does imply the necessary urgency so that the petitioner will
therefore have to submit and evidence the necessary urgency as in
regular summary proceeding. Concerning "normal"
preliminary injunction proceedings, the Appellate Court of
Düsseldorf recently confirmed in
"Olanzapin-Eilverfahren" ("Olanzapin summary
proceedings") that the Enforcement Directive will not make it
necessary to change the existing case law in particular with
respect to the urgency requirement.
The current practice of the Düsseldorf Court in relation to
the right to inspection is also being criticized by the Appellate
Court of Munich. Currently, the interest of the respondent to keep
secrets confidential is being taken into consideration during the
enforcement of an inspection order, such that the inspection is
performed by a neutral court expert in the presence of the legal
counsel of the petitioner, sworn to secrecy toward the client,
while the petitioner is not allowed to participate. The expert
opinion that the court expert will then have to produce shall be
made available to the petitioner only if the expert confirms a
certain likelihood of infringement and, after the respondent had
the opportunity, to specify and submit that and to which extent
trade secrets might be affected, so that the court can then ensure
that confidential information not needed to verify likelihood of
infringement according to Sec. 140c of the PatG will be blackened.
However, the Appellate Court of Munich challenges these principles
in the case "Laserschweißen." The Appellate Court
of Munich states that the practice to first make available the
expert opinion to the legal counsel of the petitioner, but not to
the petitioner itself, would conflict with the right to be heard
that is anchored directly in the German Constitution (Art. 103,
Para. 1 of the German Constitution). Further, appropriate measures
deemed to reconcile the controversial interests of petitioner and
respondent need to be defined and determined prior to the issuance
of the inspection order, and not only in the course of the
proceedings. Finally, the Appellate Court of Munich raises the
question of whether the current practice that leaves determining
the infringement issue with the court expert is in line with
current case law of the German Federal Court of Justice (the
Appellate Court makes particular reference to the decision of the
Federal Court of Justice in the "side mirror" case. In
"side mirror," the Federal Court of Justice instructed
the deciding court to interpret the patent itself and not to leave
the claim construction to the expert. Against this background, the
Appellate Court of Munich allowed the appeal to the Federal Court
of Justice, because this case is one of fundamental importance.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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