Preservation of evidence in patent infringement? Inspection!

The success of a patent infringement suit is directly related to good evidence. If there are difficulties in providing evidence of a patent infringement, a good remedy has been available in Germany since 2008: the inspection for evidence purpose under § 140c German Patent Act.

Difficulty in proving patent infringement? Inspection!

The success of a patent infringement suit is directly related to good evidence. If there are difficulties in providing evidence in the case of patent infringement, a good remedy has been available since 2008: the inspection claim under § 140c Patent Act.

Especially in the field of patent protection, it is often not so easy to build up a good body of evidence for a patent dispute or a patent infringement action. This is because if the patent infringement concerns production processes or internal work processes, it may be part of very complex processes on the one hand, but on the other hand it is also possible that no inspection is possible and the processes are possibly also kept secret.

Inspection for evidence purpose under § 140c German Patent Act

In such a case, the inspection claim under § 140c Patent Law may be of assistance. With the implementation of Art. 6 and 7 of the European Enforcement Directive 2004/48/EC of the European Parliament and of the Council, Art. § 140c PatG was created and incorporated into German patent law.

This creates a legal right to visit offices or production sites of a suspected infringer: the on-site inspection for evidence purpose.

Scope of the right to inspection

Both objects and procedures can be inspected. The term “things” includes all physical objects, i.e. also construction drawings or building plans.

It is important with regard to general digitalisation and automation that, according to the Federal Supreme Court, computer data are also to be understood under “things” in an inspection claim – if there is an embodiment on a data carrier (BGH 2006, XII ZR 120/04).

The term “process” includes all common work, production and use processes.

Inspection for evidence purpose: which measures are permissible?

Viewing literally includes seeing as a measure of inspection. In fact, the inspection claim goes beyond this: it is simply permissible to take any measure that is necessary to secure the required evidence. Examples of this are palpation and even taking objects and examining them elsewhere.
In addition to inspection, any measure necessary to secure the required evidence is also admissible. For example, palpation or even taking objects and examining them elsewhere – if this is necessary – is also permitted.

Sufficient probability of patent infringement required

So, on the basis of the visitation claim, can one visit offices or production sites of a suspected infringer unannounced on the basis of a faint suspicion and secure evidence of patent infringement? No, not at all.

Rather, the inspection claim is subject to several conditions. Briefly, these are:

Sufficient likelihood of patent infringement
Necessity of the inspection
and proportionality.

These aspects of proportionality and proof of the requirement and probability of one’s own being affected are known from the entire legal spectrum. In patent law, an essential point is added: it often comes to the protection of the secrecy interests of the alleged infringer.

Inspection is internationally enforceable

Patent protection is – unlike trade mark or design protection – a territorial right; patent protection must be applied in each country in which this invention is to be protected. This is done according to national patent laws and their interpretation. And, of course, a multitude of different national legal requirements must also be observed in the case of a patent infringement. Which instrument in which jurisdiction is available to a patent proprietor in the event of a patent infringement can sometimes be difficult to assess for the party concerned.

It is therefore all the more gratifying that the inspection claim as a means of securing evidence and obtaining information in patent disputes can also be asserted in many other countries – but often with different requirements and powers. This is already evident among our European neighbours.

In France, for example, is the so-called Saisie-contrefaçon; it is applied in 80% of infringement actions. Compared to German law, the saisie-contrefaçon allows more far-reaching interference with the rights of the person claimed. It is also particularly effective because the obtaining of evidence is an ex parte procedure: If the application for obtaining evidence is successful, a bailiff is appointed to carry out the investigations – and this is done without notifying the IPR infringer (ex parte). However, legal action must be filed within a short period of time after the seizure, otherwise the saisie is invalid.

Please read for more details our article: Preservation of evidence in case of IP infringement: Comparison DE and FR

In the Italian, Belgian and Swiss legal systems, there are also procedures for the preservation of evidence in patent litigation, which are very similar to the saisie-contrefaçon. They also enable the owner of a patent to obtain a seizure of the allegedly infringed objects upon request.

In the UK, in patent infringement disputes, an on-site inspection for evidence purposes – in short, “discovery” – is subject to the Anton Piller order (due to Anton Piller KG v Manufacturing Processes Ltd. of 1975). This is a court order requiring the defendant to allow the applicant party access to its premises to conduct investigations. This is also an extremely effective ex parte procedure in patent disputes.