German Patent Modernisation Act – A Game Changer for Protection of Confidential Information in Patent Litigation?

Dirk Schüßler-Langeheine, attorney-at-law, partner , Hoffmann Eitle , Germany
Nikita Alymov, Attorney-at-law , Hoffmann Eite , Germany

Protection of confidential information disclosed in litigation used to be insufficient in Germany. For a long time, it was only regulated fragmentarily. Despite the implementation of the Trade Secret Directive (EU) 2016/943 into German law (Trade Secret Act) in 2019, the legal framework was initially not applicable to patent disputes. During patent litigation, the disclosure of information containing trade secrets is often indispensable to justify certain claims or as a defence to an alleged patent infringement, but parties were discouraged from using the relevant information for lack of appropriate protection. Therefore, the German Parliament approved the Patent Modernization Act on June 10, 2021 including a new provision for the protection of trade secrets in patent litigation (Sec. 145a German Patent Act). According to the new Section 145a, certain provisions of the Trade Secret Act are now applicable in patent disputes, such as the possibility to designate a part of the court file as confidential so that third parties have no access and to establish a confidentiality club. The present paper will illustrate the practical issues with the protection of trade secrets during patent litigation in Germany and analyse the recent development. The authors aim to outline typical situations during patent litigation which will be affected the most by the recent legislative amendment and its impact on patent litigation practice and strategy.

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Germany Intellectual Property Consultant May 2022 Vol.15, No. 59, Spring 2022

Dirk Schüßler-Langeheine

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Study of law, politics and Japanese studies at Bonn University 1989 – 1995; scholar of Konrad-Adenauer-Stiftung 1990 – 1995; study of language and culture in Kyoto (1991/92) and Reims (1992/93). Research assistant at the Institute for International and Foreign Private Law of Cologne University 1995 – 1998. Legal traineeship in Wuppertal, Düsseldorf, Cologne and Tokyo 1996 – 1998; second juridical state examination 1998. Research student at Kobe University 1998/99 as scholar of the Japan Foundation. German attorney-at-law since 2000. Doctorate in Law, University of Osnabrück in 2003. With HOFFMANN EITLE since 2004. Lecturer in the "Master of Advanced Studies in Intellectual Property" program at the ETH Zurich in the academic years 2009 and 2010. Co-head of HOFFMANN EITLE's Litigation & Licensing Group since 2010. Since 2020 Business Mediator (Munich qualification – Eidenmüller/Hacke/Fries)

Nikita Alymov

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Study of law at Albert-Ludwigs University in Freiburg 2011-2017; legal traineeship at the higher regional court of Munich 2017 – 2019, including stages at a leading European law firm in Munich in intellectual property and in the legal department of the European Patent Office in Munich; 2020-2021 Master Studies in Intellectual Property Law in London at Queen Mary University of London; with HOFFMANN EITLE since 2020

Hoffmann Eite

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HOFFMANN EITLE is one of the largest intellectual property law firms in Europe with a market-leading, strong presence of 100+ highly qualified patent attorneys and attorneys at law. Hoffmann Eitle was one of the first to create a one-stop IP boutique providing outstanding quality services in all areas of intellectual property. No other European firm is entrusted with more EPO opposition cases. HOFFMANN EITLE’s forceful team of passionate litigators has profound experience in patent disputes in all relevant industries, including pharma and other life sciences, medical devices, telecommunication, automotive etc. Hoffmann Eitle has also extensive experience in the trademark and design field conducting searches and application proceedings. A further strength is the vast expertise in international coordination of multijurisdictional disputes, advising clients regarding their overall European litigation strategy. With offices in Munich, London, Dusseldorf, Hamburg, Milan, Madrid and Amsterdam, Hoffmann Eitle is taking the truly European approach. In Japan, Hoffmann Eitle is famous for being able to advise their clients in Japanese.

Hoffmann Eitle

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HOFFMANN EITLE is one of the largest intellectual property law firms in Europe with a market-leading, strong presence of 100+ highly qualified patent attorneys and attorneys at law. Hoffmann Eitle was one of the first to create a one-stop IP boutique providing outstanding quality services in all areas of intellectual property. No other European firm is entrusted with more EPO opposition cases. HOFFMANN EITLE’s forceful team of passionate litigators has profound experience in patent disputes in all relevant industries, including pharma and other life sciences, medical devices, telecommunication, automotive etc. Hoffmann Eitle has also extensive experience in the trademark and design field conducting searches and application proceedings. A further strength is the vast expertise in international coordination of multijurisdictional disputes, advising clients regarding their overall European litigation strategy. With offices in Munich, London, Dusseldorf, Hamburg, Milan, Madrid and Amsterdam, Hoffmann Eitle is taking the truly European approach. In Japan, Hoffmann Eitle is famous for being able to advise their clients in Japanese.

Germany Intellectual Property Consultant May 2022 Vol.15, No. 59, Spring 2022

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