Patent Enforcement in Germany Pros and Cons by Alexander Harguth Attorney at law

1. Patent Enforcement in Germany Pros and Cons by Alexander Harguth Attorney at law Patent- und Rechtsanwälte Alexander Harguth - Attorney at law - Galileiplatz 1 81679 München Tel. +49 (89) 92 80 5-0 Fax +49 (89) 92 80 5-444 harguth@bardehle.de www.bardehle.com

2. 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 futurebring?

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

4. 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;

5. (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; Means available during a patent infringement lawsuit • (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

6. 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

7. 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;

8. Protection of confidential information: • Appointment of independent expert; • Inspection carried out together with claimant’s representative(s) bound to secrecy obligation; • Establishment of the expert opinion; • 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.

9. 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 ?

10. Thank you for your attention!