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Patents
GERMANY
Federal Supreme Court improves possibilities of patentee to collect evidence
Residual Pollutant Elimination - X ZR 114/03
In lawsuits concerning industrial property rights, the submission of documents may be ordered by the court, according to Section 142 German Civil Procedural Law, if the documents are suitable and necessary to clear up the facts and the submission of these documents is adequate, i.e. just and reasonable in view of an appreciation of the colliding concerns. For a court order/subpoena, it may be sufficient that a use of the IP right is likely.
In a case decided by the Federal Supreme Court, a patentee had granted a license to a company to use a German patent that is directed to a method for eliminating pollutants from exhausts of a waste incinerating plant. Some years later, the parties were in dispute on whether a new type of waste incinerating plant made use of the protected invention and whether royalty fees had to be paid for this new type of plant. The patentee filed an action against the company which, however, was rejected by the Munich District Court and subsequently by the Munich Appeal Court, because the patentee could not present sufficient evidence for proving the use of all claim features.
During the litigation proceedings, the patentee requested that the company be obliged to present a specific flow diagram which was filed with the Office for the Environment by the company to get the permission to operate the new plant. In Germany, the court may grant a court order/subpoena according to Section 142 German Civil Procedural Law to the effect that one of the parties, or a third party not necessarily involved in the litigation, is obliged to present specific documents. However, the Appeal Court rejected this request, and consequently the patentee was not able to prove the use of the invention.
The patentee filed a further appeal with the Federal Supreme Court which resulted in an annulment of the decision of the Munich Appeal Court. The Federal Supreme Court held that the rejection of the request according to Section 142 German Civil Procedural Law was not justified by referring, inter alia, to European Directive 2004/48/EC on the enforcement of intellectual property rights. Section 142 German Civil Procedural Law now also has the provision to put into practice measures for the procurement of evidence as provided in this European Directive, in correspondence with the French "saisie contrefaçon" and the British "search order" ("Anton Piller Order").
Therefore, the submission of documents may be ordered by the court according to Section 142 German Civil Procedural Law if the documents are suitable and necessary to clear up the facts, and the submission of these documents is adequate, i.e. just and reasonable in view of an appreciation of the colliding concerns. However, a US-style "in camera" approach does not come into consideration because this would contravene the German Constitution. Instead, it is possible to take justified concerns of the obliged party into account in that secret information is blackened in the document.
The Federal Supreme Court further held that for issuing a court order/subpoena the use of the IP right must be "likely", whereas it may remain unclear whether or not an infringement or - in case of a license agreement - any illicit use of the patent-in-suit is actually present. As a result, this decision of the Federal Supreme Court further improves the possibilities of patentees to collect evidence and will thus be of high practical importance in the future.
Reported by Dr. Frank Peterreins
Bardehle Pagenberg Dost Altenburg Geissler
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