Inspection in infringement proceedings

The German Federal Supreme Court’s recent decision of August 1, 2023, X ZB 9/21 – Aesthetic treatment (“Ă„sthetische Behandlung”) relates to the balance of confidentiality interests and effective enforcement of a patent or utility model in independent evidentiary procedures.

An expert opinion was prepared based on an inspection of a potentially infringing product. This Supreme Court decision relates to a first instance court order on the provision of the expert opinion to applicant (i.e., the patent or utility model owner who requested the inspection). The Supreme Court held that such an order is appealable by means of immediate appeal (“sofortige Beschwerde”). According to this Supreme Court decision, immediate appeal is available as a legal remedy also when the first instance court orders that the expert opinion be disclosed to applicant despite the respondent (i.e., the alleged infringer) asserting a confidentiality interest (due to the expert opinion including information on trade secrets).

The Supreme Court also held that the respondent has to actively assert its confidentiality interest even if the Patent Office (here: the GPTO) has already provided a negative preliminary opinion on the validity of the asserted utility model or patent, in order to challenge the provision of the expert opinion to applicant.

The importance of this decision is evidenced by the fact that it will be published in the official collection of decisions of the German Federal Supreme Court (BGHZ).