Patent Enforcement in Germany Pros and Cons by Alexander Harguth Attorney at law Patent- und Rechtsanwälte Alexander Harguth - Attorney at law - Galileiplatz München Tel. +49 (89) Fax +49 (89)

Solution of evidence insecurities in German Patent litigation - Status quo ? -Have the requirements of Directive 2004/48/EC on the enforcement of intellectual property rights already been fulfilled? - What does the future bring?

Basics of German patent litigation - Different situation before and after starting the proceedings as to the available mechanism - Financial risk when filing a lawsuit Beginning of the patent lawsuit on the merits Situation before starting the proceedingsSituation after starting the proceedings

Basics of a patent lawsuit - Principle: Each party presents and proves the facts that are necessary to support its claim; defendant may remain passive and is not obliged to disclose facts harmful to his position; - Exception: Defendant is not allowed to plead ignorance of facts that are subject to his cognition - Conclusion: Even if the defendant cannot always rely on the burden of proof and remain passive, the situation can be unsatisfactory;

Means available during a patent infringement lawsuit (I) §§ 142 cf. of the German CCP: - Order for submission of documents and/or objects cited by any party may be addressed to any party, independently of who bears the burden of proof; - Discretion of the Court: Balance of all aspects of the individual case, secrecy or confidentiality reasons - Focus: Specific objects (documents, etc.), no general discovery; - No enforcement: Court can draw negative conclusions if order is not satisfied; (2) §§ 485 cf. German CCP, independent evidence taking -Possible before or even after commencement of legal proceedings, - Content: Physical inspection, to interrogate witnesses or to introduce expert examinations. -Requirement in the case of pending proceedings: Likelihood of destruction or if evidence may be prevented from being accessible in the proceedings or the respondent gives his consent to such an order. - Seizure of “infringing” objects is not possible

Means available before commencement of the proceedings - A mere belief of infringement is insufficient to initiate proceedings; - Federal Supreme Court: Decision of May 2002 Faxkarte; BGH in GRUR 12/2002, p. 1046; - § 809 of the German Civil Code (substantive law): to submit an object for its inspection or to allow the inspection; - Requirements:  “certain amount of” probability (of infringement of the underlying claim)  Parties' respective interests must be weighed against each other,  Secrecy interests may be solved by procedural means - Limits: No fishing expeditions

What has happened since “Faxkarte” decision - Few published cases; - Solution proposed by the Düsseldorf District Court :  Enforcement: Lawsuit on the merits./. Preliminary injunction proceedings combined with independent evidence taking proceedings;  Result: Opinion of an independent expert, which can be used in the subsequent proceedings.  Further requirements: Urgent case; If a lawsuit on the merits is already pending: Likelihood of destruction or if means of evidence may be prevented from being accessible in the proceedings;

Protection of confidential information: (1) Appointment of independent expert; (2) Inspection carried out together with claimant’s representative(s) bound to secrecy obligation; (3) Establishment of the expert opinion; (4) Delivery of the opinion to the defendant and to claimant’s representative(s) bound to a secrecy obligation; (5) Decision of the court whether and to what extent the findings of the expert can be forwarded to the plaintiff.

Have the requirements of Directive 2004/48/EC on the enforcement of intellectual property rights already been fulfilled? -Should such order require an “urgent case”? -Should there be a difference if a lawsuit on the merits is already pending or not ? -Should there be a possibility to effectively seize infringing goods ?

Thank you for your attention!