IP Enforcement Directive and Gathering Evidence in Germany

On 26 February 2007, Judge Kühnen, one of the chairmen of the regional court in Düsseldorf for patent litigation, made a speech about legal instruments to obtain evidence in patent infringement cases in Germany. In front of a large attendance of patent experts he stressed that although the IP Enforcement Directive is formally not implemented into German law yet, its application is already ensured by existing provisions in German law.

Obtaining evidence in patent disputes is often difficult, especially if the infringing conduct is not public. According to German law, the general principle is that the defendant is under no obligation to disclose evidence to its disadvantage and German civil procedure law does not know a specific procedure such as "saisie contrefacon" in France or "search order" in UK. Nonetheless, the Düsseldorf courts supported by a decision of the Federal Court of Justice achieve a similar result in line with the IP Enforcement Directive by a specific interpretation of some general provisions of the German Civil Code and the German Civil Procedure Act. According to this interpretation the defendant or any third party in the possession of relevant documents or possibly infringing products can be obliged (1) to disclose them or (2) to tolerate an expert's examination. Important to mention is that the court can order such measures by a preliminary injunction without an oral hearing. In this regard, Judge Kühnen underlined that the requirements to obtain such an order are not high, in particular if the documents or products are relevant to support the claimants position. He proposed that patentees should always take these options into account when litigating in Germany.

Surely, such a decision is subject to the principle of proportionality. Especially confidentiality interests have to be considered at this point. Parties may have a protectable interest, that information material about their business remain confidential and are not disclosed to others, in particular not to competitors. In its recent decision, the Federal Court of Justice recognized this problem and offered a pragmatic solution: confidential parts of documents should be blacken or garbled. If the court orders the expert to enter the potential infringer's premises for carrying out an experts examination, data of such examination reports can be kept confidential if the results do not indicate a likelihood of patent infringement. Is this the case, only the court, the defendant and eventually the claimant's lawyers would be informed about the outcome of the examination, but not the claimant himself.

The recent decision of the German Federal Court of Justice and the legal practice of the regional courts in Düsseldorf show that although the IP Enforcement Directive is not formally implemented into German law yet, there are already efficient options to obtain evidence in patent cases. Though not fully identical to the legal instruments under French and English law, the German legal practice now provides a well equipped and similar instrument for claimants in such litigation. Especially the practice of the regional courts in Düsseldorf leads to a further strengthening of the position of patentees litigating in Germany.

Dr. Kaya Köklü , Simmons & Simmons Düsseldorf