In order to increase efficiency, the right to seek inspection according to Sec. 140c of the German Patent Act (PatG) is normally enforced by means of a preliminary court order. The “Düsseldorf Practice” assumes that the required “urgency” is implied by Sec. 140c subs. 3 first sentence of the PatG. The other requirements for a preliminary court order need to be submitted and evidenced as usual. Sec. 140c of the PatG has been introduced during implementation of the Enforcement Directive. The Enforcement Directive made further changes of the German Intellectual Property rights necessary, for instance, in the Copyright Act, where a new Sec. 101a of the Copyright Act was introduced, which imposes an entitlement to examination that is almost identical to the provision of Sec. 140c of the Patent Act.
In contrast to the practice of the Düsseldorf Court, the Appellate Court of Cologne held in a case concerning the right to inspection under copyright law, that Sec. 101a of the Copyright Act does imply the necessary urgency so that the petitioner will therefore have to submit and evidence the necessary urgency as in regular summary proceeding. Concerning “normal” preliminary injunction proceedings, the Appellate Court of Düsseldorf recently confirmed in “Olanzapin-Eilverfahren” (“Olanzapin summary proceedings”) that the Enforcement Directive will not make it necessary to change the existing case law in particular with respect to the urgency requirement.
The current practice of the Düsseldorf Court in relation to the right to inspection is also being criticized by the Appellate Court of Munich. Currently, the interest of the respondent to keep secrets confidential is being taken into consideration during the enforcement of an inspection order, such that the inspection is performed by a neutral court expert in the presence of the legal counsel of the petitioner, sworn to secrecy toward the client, while the petitioner is not allowed to participate. The expert opinion that the court expert will then have to produce shall be made available to the petitioner only if the expert confirms a certain likelihood of infringement and, after the respondent had the opportunity, to specify and submit that and to which extent trade secrets might be affected, so that the court can then ensure that confidential information not needed to verify likelihood of infringement according to Sec. 140c of the PatG will be blackened. However, the Appellate Court of Munich challenges these principles in the case “Laserschweißen.” The Appellate Court of Munich states that the practice to first make available the expert opinion to the legal counsel of the petitioner, but not to the petitioner itself, would conflict with the right to be heard that is anchored directly in the German Constitution (Art. 103, Para. 1 of the German Constitution). Further, appropriate measures deemed to reconcile the controversial interests of petitioner and respondent need to be defined and determined prior to the issuance of the inspection order, and not only in the course of the proceedings. Finally, the Appellate Court of Munich raises the question of whether the current practice that leaves determining the infringement issue with the court expert is in line with current case law of the German Federal Court of Justice (the Appellate Court makes particular reference to the decision of the Federal Court of Justice in the “side mirror” case. In “side mirror,” the Federal Court of Justice instructed the deciding court to interpret the patent itself and not to leave the claim construction to the expert. Against this background, the Appellate Court of Munich allowed the appeal to the Federal Court of Justice, because this case is one of fundamental importance.