Germany: Dawn Raids on Suspected Patent Infringers: German Federal Supreme Court Confirms Patent Owner's Access to Competitor's Premises

Last Updated: 13 April 2010
Article by Christian Paul

German courts are popular for litigating patents because they are known to be competent, fast, comparatively inexpensive, and generally patent-owner friendly. Until recently, however, the drawback remained that the German legal system did not provide for a discovery process, as is common in the United States and the United Kingdom, for example. Furthermore, a plaintiff in Germany must collect and present all evidence needed to prove its case, no matter how difficult this may be. For many years, therefore, a suspected infringer in Germany simply could rely on practicing a patented method behind closed and locked doors, with only a marginal chance of facing legal dispute with a patent owner.

This situation already had been gradually changing over the past few years, and now those days are over once and for all. With a decision published on February 23, 2010, the German Federal Supreme Court has confirmed that the "dawn raid" procedure against suspected patent infringers that has emerged under case law recently is in accordance with German law, and it has set out clear guidelines for the procedure.

"Dawn Raids" on Suspected Patent Infringers

If they can show a certain likelihood of infringement, patent owners can obtain an ex parte order from a German court granting them access to the premises of a competitor who is suspected of infringing their patent. This covers in particular production facilities, laboratories, and R&D sites, no matter how secret and protected the premises may be.

Such inspection proceedings or "dawn raids" are carried out by a court-appointed expert, accompanied by a court marshal or sometimes even police officers, and two to three attorneys as counsel for the patent owner, usually a litigation-focused attorney and a patent attorney. This larger team can appear without prior warning at the site that is to be inspected and enforce access, usually simultaneously serving a court order on the management of the facility. The expert will then proceed to inspect the allegedly patent-infringing device or process and may take pictures, partially dismantle devices, and take samples. After completing this inspection, the expert will summarize its findings in an expert opinion, which will be admissible as binding evidence in subsequent patent infringement proceedings.

Protection of Defendant's Business Secrets?

Obviously, such an intrusion into the heart of the premises of a competitor raises concerns about protection of business secrets, in particular since counsel for the patent owner are allowed to be present during the inspection. Even though the procedure is based on the European Enforcement Directive, neither the Directive nor the newly created provisions of the German Patent Law (§ 140c PatG) specify details regarding the implementation of the procedure, thus leaving it to case law to find an adequate solution.

The procedure developed under case law over the past few years addressed this concern by obliging plaintiff's counsel to keep secret all details observed during the inspection. This has raised much controversy, as it has remained unclear whether legal counsel who are regularly advising their clients will—and, even more so, are able to—keep knowledge gained during such inspection separate from their general knowledge, or whether they will inevitably and perhaps inadvertently disclose such information to their clients.

A second problem has been how to handle concerns about trade or business secrets contained in the expert opinion. In proceedings before German courts, such expert opinion will be brought to the attention of the patent owner. If the alleged infringer asserts that this opinion contains business secrets that ought not be disclosed to the patent owner—likely its competitor—then the court must find adequate means to protect such business secrets. For example, this may be achieved by redacting parts of the expert opinion. However, in the course of determining whether there is a business secret at all, and whether the interests of the patent owner in documenting patent infringement may justify disclosure of any such business secrets, the patent owner must be able to exercise its procedural right to be heard. The practice developed under case law solved this conflict by allowing plaintiff's counsel to inspect the expert opinion and comment on any secrecy concerns, while obliging the counsel to keep the expert opinion confidential and not share it with their clients at this stage. Obviously, this led to the same concerns outlined above regarding inadvertent and indirect disclosure of the counsel's observations made during the inspection.

A solution proposed by the Munich courts was to hold a mandatory hearing prior to any such inspection and to order specific measures before any participant was exposed to sensitive information. Even if this would safeguard the interest of the defendant, such a hearing would give an alleged infringer sufficient warning, which could make finding any meaningful object to inspect impossible in many cases.

In practice, this uncertainty had caused courts to withhold the release of expert opinions prepared following inspection proceedings, pending the ruling of the Federal Supreme Court.

The Decision (BGH X ZB 37/08 – Lichtbogenschnürung)

The Federal Supreme Court has now, for the first time, confirmed that the inspection procedure developed under case law is in accordance with German law and balanced the interests of the patent owner and the suspected patent infringer. The Court confirmed that a court order obliging attorneys to keep information confidential and not disclose it even to their own clients is permissible, thus allowing the release of expert opinions to plaintiff's counsel to comment on alleged business secrets in such opinions. The same rules apply with respect to counsel's observations during the inspection itself. With this ruling, the core structure of the inspection procedure has been confirmed, thereby allowing plaintiff's counsel to take part in the inspection. Furthermore, the Court provided a clear set of rules that have to be met in order to qualify information as a business secret, bringing the standard protection in line with long-tested provisions of German criminal law.

To protect the interests of the alleged infringer, the Court ruled that it is mandatory in every case to balance the interests of both parties. However, the Court also clarified that even if business secrets were contained in such expert opinion, they need not necessarily prevent the expert opinion from being released, as the impact of their disclosure on competition may in fact be more or less insignificant. It can be assumed that courts will follow the approach developed under existing case law, where the outcome of the expert opinion is a significant factor in determining the balance of interests: The greater the likelihood that a patent infringement has occurred, the greater the chance that the interests of the patent owner would prevail over any concerns of secrecy raised by the alleged infringer.

Conclusions and Strategic Considerations

With the inspection procedure now approved in detail by the German Federal Supreme Court, it can be expected that even more patent owners will make use of the procedure. Companies with business activities or subsidiaries in Germany should thus be aware that a raid on their manufacturing or R&D facilities in Germany is a possible scenario in a patent dispute. As any such inspection would likely come without prior warning, it is advisable to have an "emergency plan" in place, outlining the steps that responsible personnel at the site should follow.

Similarly, patent owners who suspect infringement of their patents in Germany should consider such inspection proceedings as an option in their multijurisdictional litigation strategy and as an efficient way to obtain evidence.

In practice, inspection proceedings also can be expected to be carried out during trade fairs that take place in Germany. As this may result in a court marshal and attorneys being present at the booth to supervise an inspection of a device by an expert, it is advisable to consult with local counsel prior to attending a trade fair to evaluate strategic options.

On the whole, the decision by the Federal Supreme Court is beneficial for all parties as it has brought long-sought clarity regarding the details for implementing such inspection proceedings. The closer the decision's guidelines are taken into consideration, the greater the benefit to those who are prepared.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions