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Patent vindication and document submission

In its judgement of 26.07.2022 – X ZR 17/21 – Brustimplantat (Breast Implant), the Federal Court of Justice (FCJ/ BGH) dealt with the patent law vindication and thereby consolidated its established case law:

Whether a person entitled to a patent may demand the assignment of a patent or the grant of a joint right thereto under Sec 8 (1), (2) German Patent Act requires a comparing examination of the patent´s teaching with the teaching of the alleged unlawful taking. For this purpose, it is primarily necessary to examine to what extent both teachings correspond (confirmation of BGH GRUR 2016, 265, para. 22 – Kfz Stahlbauteil; BGH GRUR 2020, 1186, para. 41 – Mitralklappenprothese). Furthermore, the judgment provides a nice overview of the possibilities to oblige a party not burdened with evidence to submit documents to the court.


In this case, two companies had worked together for more than a decade on the development of breast implants. In the course of this, there had been frequent factory and company visits, the extent of which was disputed between the parties. After the end of the cooperation, the defendant applied for the patent in dispute.

The patent in suit discloses a method for manufacturing implants or intermediate products of such implants. The aim is to avoid a circumferential seam on the implant shell, as this can lead to bodily incompatibilities. For this purpose, the seam is formed on the back of the implant shell by placing a first foam layer on the silicone up to the back. The foam layer is bonded to the implant shell by vulcanisation. The second foam layer then only has to cover a small area on the back of the implant shell, which significantly reduces the circumference of the seam.

In the proceedings, the plaintiff had submitted various documents from which it should be apparent that it had already been in possession of the teaching in accordance with the patent. The plaintiff requested, inter alia, that the defendant be ordered to transfer all national parts of the patent to the plaintiff and to consent to the rewriting of the national parts to the respective national patent offices, or alternatively to grant a joint entitlement.

The defendant explained that the patent was the result of its own research. This resulted in particular from a document (TD 2007) which was prepared by the defendant at the end of the cooperation. The plaintiff objected that the content of this document was almost identical to an older document (TD 2003) which originated from the time of the parties’ cooperation. Differences only arose with regard to a different production site. However, the TD 2003 was exclusively in the possession of the defendant.

The RC Frankfurt a. M. and the HRC Frankfurt a. M. had dismissed the action because the plaintiff had not sufficiently proven either ownership of the invention or the act of extraction.

Presentation of the vindication requirements:

The FCJ overturned the decision and referred it back to the HRC Frankfurt a. M. for a new hearing. In the opinion of the FCJ, the plaintiff had sufficiently demonstrated ownership of the invention by submitting documents. The FCJ considered the teaching of the patent to cover not only vulcanisation as a form of application, but it was also clear from the description that the foam layer was pulled, pressed or stretched before vulcanisation. Against this background, the plaintiff had already sufficiently argued its ownership of the invention. For a factual submission in support of a claim is conclusive and relevant if the party submits facts which, in combination with a legal proposition, are suitable and necessary to make the asserted right appear to have arisen in the person of the party. The submission must be concrete enough to be able to assess the materiality of the facts and to enable the opponent to comment. If these requirements are met and the submission is substantially contested by the opposing party, it is up to the court to take evidence (by way of example: BGH NJW-RR 2022, 634, marginal no. 10).

In this respect, the plaintiff’s documents showed that it had already manufactured breast implants at an earlier stage of the cooperation using a process that had the features of the patent in suit.

Insofar as the defendant relied on the document TD 2007, the FCJ considered it possible that a comparison with the TD 2003 could show that the TD 2003 already described the invention in full.

Document Submission Obligations:

In the following, the FCJ therefore dealt with the question of whether the defendant had a duty to submit documents. The FCJ rejected such an obligation under Sec 423 of the German Civil Procedure Code (ZPO) in line with the HRC Frankfurt a. M., since the defendant referred to the document at most to explain its arguments and not “to provide evidence” as required by the wording.

However, the FCJ criticised the premature rejection of a duty under Sec 422 ZPO in conjunction with Sec 810 ZPO, as the TD 2003 had still been prepared during the intensive cooperation and had therefore at least also been prepared in the interest of the plaintiff. In its renewed decision, the HRC Frankfurt a. M. would also have to weigh any interests in secrecy against the probability that the TD 2003 already described the invention in full.

If no obligation arose from Sec 422 ZPO, the Court of Appeal would have to decide again on the submission order pursuant to Sec 142 (1) ZPO. In any case, a refusal could not be based solely on the defendant’s interests in secrecy, as these could also be taken into account by blacking out the non-relevant passages. The FCJ also makes a general reference to the possibility of a protective order under the new Sec 145a German Patent Act in conjunction with Sec 16 and 19 Business Secret Act.

CReative Contribution:

In the subsequent assessment of a creative contribution by the plaintiff, it was not necessary for it to have an independent inventive content (BGH GRUR 2001, 903, paras. 14, 21- Atemdrucksteuerung). Furthermore, it was wrong to examine each feature as to whether it was known in the prior art itself (BGH GRUR 2001, 903, marginal no., 21- Atemdrucksteuerung). Only those contributions that have not influenced the overall success, i.e. are insignificant in relation to the solution, and those that were created on the instructions of an inventor or third party, are to be excluded (BGH GRUR 2020, 1186, marginal no. 39 – Mitralklappenprothese).


In summary, the judgement does not represent a legal novelty. It emphasises once again that also and especially in the case of a vindication, the teaching of the patent applied for must be examined. In vindication cases, the plaintiff is usually at the back of the pack. Their submission must be specific enough to be able to assess the relevance of the facts and to enable the opponent to comment, but no more. For this purpose, it is advisable to make use of documents when presenting the case and to work less with witnesses who, for example, are supposed to prove company visits and their extent.

Furthermore, the judgement shows various procedural possibilities how the party not burdened with evidence can be obliged to submit documents. In this respect, the FCJ has already clarified in NJW 2007, 2989 – Einwertungsunterlagen für “Schrottimmobilien” that it is a discretionary error if the court does not consider an order at all if the requirements of Sec 142 ZPO are met. Thus, practitioners in particular should keep the relevant provisions in mind.

Robert Knaps