The question of whether and how to secure supplementary protection for products that once enjoyed patent protection is of paramount economic interest. Apparently, German courts have adopted quite diverse positions on this subject. However, most recently the German Federal Court of Justice has rendered a landmark decision clarifying the requirements in this field (BGH, case ref. I ZR 107/13 – Exzenterzähne). The subject-matter of the case is the so-called "Stecktechnik", a fastening technology for electro installation. Although the patent had expired, Austrian client Schnabl Stecktechnik GmbH, assisted by a German Hogan Lovells team under Frankfurt IPMT partner Nils Rauer, prevailed in court on second appeal.

I.

In German court rulings, it is often stated that the law against unfair competition may not serve as a "vehicle" to extend patent protection beyond the actual expiry of a patent. Usually, what follows is the rather undifferentiated explanation that supplementary protection may only derive from product criteria that are independent from the technical invention that allowed for the patent registration in first place. Fortunately, the German Federal Court of Justice has now taken a much closer look at the matter.
The judges make clear that features that were part of the patent may very well contribute to the so-called "competitive originality" of the product, which is the relevant criterion under competition law. In this context, the court emphasizes that patent law on the one hand and competition law on the other, differ in their ratio legis and therefore rest on different statutory requirements. Based on this general notion of two laws having to be applied separately, the German Federal Court points out the following:

"Also a formerly patented element of a product […] may generate adequate comparative originality, if the specific design of the element is not technically necessary but a matter of free choice and replaceable by other designs which serve the same technical purpose without compromising the quality of the product."

In other words, the test to be engaged is whether the technical function of a product that once enjoyed patent protection (in whole or in part) can also be achieved by other technical means. If the answer to this question is yes, then it might be the case that the product enjoys supplementary protection under competition law despite of the patent having expired. The assessment has to be comprehensive and inclusive in the sense that it may not leave out those elements that formed part of the patent.
In consequence, the former holder of a patent may very well oppose, competitors who copy his product after the expiry of the patent if he can show that the product is of competitive originality. What is paramount in this respect is the overall impression that the product creates amongst the customers. If this impression conveys the association of a specific origin of the product, competitive originality is to be confirmed. Accordingly, competitors are bound to exercise the creative freedom to construe and shape their products in a way safeguarding adequate outward distinctiveness.
The German Federal Court further emphasis that, under the assumption of competitive originality being established, it is generally not unreasonable to request competitors to avoid copying an already existing product design. Under normal circumstances, the mere labeling of an almost identical product is insufficient. This is also the case if formerly patented elements which are meanwhile free state-of-the-art contribute to the competitive originality of the overall product. For, the more alike the overall impression of two products is, the higher are the standards that need to be applied in terms of consumers not being misled and reputation not being unduly exploited.

II.

In summary, the decision clearly strengthens the position of right holders whose patents have expired. The judges use very determined and concise language when setting out the criteria for supplementary protection under competition law. Whether a certain element of the product once enjoyed patent protection is irrelevant if there are other technical solutions to the problem today. What matters are the outer appearance and the customers' association therewith.
More than ever, it is worth considering one's option under competition law when steering towards the end of the lifetime of a patent. Products that have been marketed under patent protection for years and years are likely to have built up competitive originality amongst the circle of customers. As regards the actual case, it is now for the Court of Appeal in Frankfurt to apply the criteria set out by the Federal Court and to hand down a decision on the merits of the case.