Court of Appeal of Düsseldorf, Decision of 17 March 2011, I-2 W 5/11 ("Late Inspection Application")
Preliminary proceedings aiming at the inspection of a potentially infringing product or method can be successful, even if a considerable time has passed since the patent owner spotted the possible patent infringement. The German standard requirement for preliminary injunctions - "urgency" - does not apply to inspection orders.
Problem: Lack of Factual Information
The patentee does often not have enough factual information to substantiate a claim for patent infringement. This is especially true in cases where the patented technology is solely used "in-house" (e.g. in a manufacturing machine) and cannot be traced back from the marketed device or process.
Solution: Inspection Order
Although German law does not provide an equivalent to the UK disclosure or US discovery, there are some efficient means for obtaining evidence for patent infringement. One of these tools is the so-called inspection order which goes back to case law of the patent courts in Düsseldorf – the most important venue for patent infringement cases in Germany.
Legal Mechanism: Two Combined Procedural Tools
a) Preliminary Injunction
The court can order the inspection of an object or a process if the patentee can demonstrate that there is a substantial likelihood for patent infringement. Such an inspection order can be granted by way of an ex parte preliminary injunction, without the potential infringer being heard (surprise effect). Should the potential infringer refuse entry to the premises, the inspection order can be enforced with the help of the police.
b) Proceedings for the Preservation of Evidence
The court can appoint a court expert to render an opinion about the features of the device or process at issue. The patentee can use this documentation to substantiate the claim for patent infringement in the (separate) infringement proceedings. This element of the inspection order originates from the proceedings for the preservation of evidence which are a special mechanism for gathering evidence.
Lower Barrier: No Urgency Requirement
Under German procedural law, a preliminary injunction normally requires "urgency" in the sense that the patentee must file the request within a reasonable time upon knowledge of the relevant facts. The Court of Appeal of Düsseldorf recently held that this requirement does not apply to inspection orders aiming at securing evidence. The reason is that an inspection order will normally only be efficient if the potential infringer does not know about the upcoming inspection. This can only be achieved by way of an ex parte injunction. The urgency requirement would be too high a barrier and render the inspection order a blunt sword.
Conclusion: Careful Choice of Venue
There are a couple of different venues for patent infringement matters in Germany. However, not all appellate courts take the approach of the Court of Appeal of Düsseldorf. Since the appellate courts have final jurisdiction over matters of preliminary injunctions, the case law varies. We therefore advise the patentee to carefully choose the venue for each individual patent infringement matter. The Düsseldorf courts are certainly a first address for inspection orders.