According to Sec. 140c of the German Patent Act the patent owner may request documents and inspect an object if there is a sufficient likelihood that such object infringes their patent rights. If this infringement is of a commercial nature (which only excludes acts in the private sphere for noncommercial purposes), the right to request documents also extends to banking, financial and commercial documents. Accordingly, the right to inspection is meant to secure necessary evidence for the preparation of a patent infringement suit and also, but no less importantly, to prevent possibly unnecessary legal disputes in advance.
Coping with information deficits
Paramount for the success or failure of a patent infringement dispute is that the patent owner has all the information needed to demonstrate and prove the use of their invention in a court of law. This is less trivial than it may sound: patent infringements often take place behind closed doors, in production halls, laboratories or operating rooms. Thus, it is good news for anyone who can get hold of a patent-infringing object on which he can demonstrate the infringement of their patent. But what if such an object cannot be obtained because the invention is merely used internally, or if you cannot tell by looking at the object that it makes use of the teaching of the patent, for example because such patent is about a production process? Information deficits in the area of infringement of trade secrets are almost notorious (see Ess, WRP 2020, 988). The law comes to the rescue of the patent owners with a right to inspection (Sec. 140c of the German Patent Act).
The story of a long slumber
The right to inspection has a long history in Germany, but remained largely theoretical for almost as long. Recognized as early as the 1980s on the basis of Sec. 809 and 810 of the German Civil Code, the right to inspection initially lay virtually dormant for 20 years due to (overly) restrictive prerequisites, until the Federal Court of Justice partially liberalized its case law in 2002 (BGH, judgment of May 2, 2002 - I ZR 45/01, GRUR 2002, 1046 - Faxkarte). However, it was not before the introduction of Sec. 140c PatG in 2008, which is based on Art. 7 and 8 of the European Enforcement Directive, that the right to inspection got something like a boost.
Sec. 140c of the German Patent Act and its European counterparts
Sec. 140c of the German Patent Act gives the patent owner a right to inspect an allegedly infringing object and to request from the alleged infringer relevant documents to prove the infringement, including bank, financial and commercial documents. This claim is typically enforced by way of preliminary injunction (heading: surprise effect) and allows the patent owner to have the business premises of the alleged infringer visited and inspected by bailiffs, experts and legal and patent attorneys without prior notice. The advantage is that the patent owner can check and secure the provability of his claim already at a preliminary stage of the patent infringement dispute.
A prerequisite, however, is that the patent owner can convince the court that there is a sufficient probability that their patent has in fact been unlawfully used. Mere speculation is not sufficient, fishing expeditions shall not take place. Rather, the subject matter to be inspected, the proceedings or the document to be produced must be defined as precisely as possible and the place where they are located must be indicated. It is obvious that this is in a certain tension with the purpose of the inspection which is to clarify the facts of the matter in the first place and to secure evidence of a patent infringement. Moreover, the claim is subsidiary and subject to a proportionality requirement: Is the patent owner compellingly dependent on judicial assistance? Is the inspection necessary to substantiate claims of the patent owner?
Against this background, Sec. 140c of the German Patent Act still falls relatively far behind in terms of practical relevance, despite the progress made with the Enforcement Directive. To demonstrate this, it is not even necessary to refer to U.S. discovery proceedings, which is still viewed with some suspicion in continental Europe. You only have to look as far as Italy, France or Belgium, where the so called Descrizione and the Saisie Contrefaçon, respectively, are far more important instruments for clarifying the facts of a case. In France, for example, the Saisie Contrefaçon is used in about 80% of cases at the beginning of a patent infringement dispute. Here, the applicant only has to prove that they are in fact the owner of the patent. It goes without saying that a rather low threshold that must be overcome to make a claim for inspection may well have a potential for abuse. In practice, however, such cases are very rare.
Conclusion
The right to inspection under Sec. 140c of the German Patent Act can - despite its restrictions - be a means to overcome lack of evidence and, thus to make enforcement of patent rights easier. An (even) more effective clarification of the facts would, of course, be desirable because it could possibly shorten what would otherwise turn out as lengthy proceedings or promote an early settlement. It will therefore often be advisable to first go via Italy, France or the USA and to try to import the findings to Germany.
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