Germany: special inspection proceedings and trade secrets
Until 2002, German courts had been very reluctant to even consider such a claim, which was granted only if the claimant could establish a “high likelihood” that a right was infringed.
The Düsseldorf courts have developed a particular procedure (the so-called Düsseldorf procedure) that seeks to balance the parties’ interests. On the one hand, there is the claimant’s interest to acquire knowledge of all facts relevant to establish the infringement, and on the other is the defendant’s interest to keep his trade secrets secret.
In order to achieve that balance, the Düsseldorf courts combined two kinds of procedure that had already been available in German procedural law. The first part regularly includes an order to have a court-appointed expert examine certain specified devices or machines to determine whether a particular right is infringed. The expert is asked to inspect the device and prepare a written opinion.
The second part of the order is a preliminary injunction requiring the defendant to acquiesce to the inspection. The defendant cannot alter the inspection’s subject matter after the order has been served and must provide all information/codes/access to the information necessary for the expert to perform its inspection duties.
Refining the law
For about ten years, the courts have been refining the case law on the requirements for such an order and the particular problems that the written opinion’s content presents to the parties’ interests. In principle, until the question of whether the defendant can invoke relevant trade secrets that are worthy of protection is finally resolved, the opinion may not be submitted to the applicant. Its attorneys and patent attorneys of record are expressly obliged to keep the opinion and all facts relating to its subject matter secret, even vis-à-vis its own clients, until it is expressly released from this duty of confidentiality.
Sometimes, the dispute over whether there are protected trade secrets contained in the opinion, whether the opinion shows that the IP right is infringed and whether the opinion must be at least in part redacted in order to protect the defendant’s interests, takes months even after the opinion has been rendered.
The particular procedure of inspection that has been developed by the Düsseldorf courts has been mostly met with agreement by corporations and lawyers alike, but there have been critics who emphasise that in some instances the defendant’s interests are not protected as they should be, eg, by setting up requirements for the establishment of protected trade secrets that are perceived as too harsh.
On the other side, claimants feel that opinions should be handed over to them in cases where the asserted trade secrets have no real value, and even if the opinion shows that the IP right in question has not been infringed.
