According to the so-called “Duesseldorfer Besichtigungspraxis” (Duesseldorf inspection practice), a patent owner who establishes a prevailing likelihood of infringement may secure evidence by inspection of the allegedly infringing device or method by a court-appointed, independent expert. The inspection order is granted in ex-parte proceedings.
Contrary to other preliminary injunctions, the required urgency is generally presumed irre-spective of a time component. The reason, according to the judges in Duesseldorf, is that main proceedings bear the risk that the accused infringer, if warned, could try to prevent the inspection e.g. by changing the device or removing the evidence, so that the inspection can only be successful if ordered in ex-parte proceedings. The Duesseldorf patent courts have established this inspection procedure long before a corresponding claim has been codified in the German Patent Act following the implementation of the Enforcement Direc-tive.
Other courts like the Higher Regional Courts of Cologne and Hamm in corresponding copyright inspection matters, however, denied a preliminary injunction for lack of urgency because some time had passed since the applicant’s knowledge of the likelihood of infringement.
The Higher Regional Court of Duesseldorf has explicitly disagreed with this opinion. It remains to be seen how the patent courts in Mannheim, the other important court for patent infringement actions in Germany, will decide on this issue. Recent oral commu-nication of one of the judges in Mannheim seems to confirm that the court would deny urgency if a patent owner enforced an inspection claim with a delay in time.
Choosing the right forum may therefore be crucial.
Hetti Hilge
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