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RC Mannheim – Kather Augenstein successfully fights for protection of sensitive data also in enforcement proceedings

In a recently published decision of 13 October 2021 (ref. 2 O 73/20), the Regional Court Mannheim ruled on security measures under Sec. 145a Patent Act in conjunction with Sec. 16 et seq. Trade Secrets Protection Act in enforcement proceedings. Kather Augenstein thus succeeded for the first time in protecting sensitive client data from third parties, which would otherwise be freely accessible. This is particularly significant because information about patent-infringing products often discloses information about the profit calculation and thus the “silverware” of a company. The decision thus allows for the first time to restrict access to and exploitation of sensitive data within the patentee’s organisation.

The Regional Court Mannheim considers Sec. 145a Patent Act to be applicable to enforcement proceedings. The board justified this by stating that Sec. 145a Patent Act was decisive for determining the scope of application of Sec. 16 to 20 Trade Secrets Protection Act in patent litigation. It was therefore irrelevant that the provisions of Sec. 16 to 20 Trade Secrets Protection Act, in their original scope of application, applied only to main proceedings. The term patent litigation was to be understood broadly and would include enforcement proceedings, which, moreover, were not excluded from the scope of application in Sec. 145a Patent Act. Moreover, a possible restriction could not be inferred from the relevant explanatory memorandum to Sec. 145a Patent Act.

In contrast, it is prominently argued in the literature that Sec. 145a Patent Act does not apply to enforcement proceedings (Kühnen, Handbook of patent infringement, 14th ed. 2022, chap. D, marginal no. 117). 117). Decisions from Düsseldorf as to whether Sec. 145a Patent Act applies to enforcement proceedings are currently not known. In the lecture event “Düsseldorfer Richtergespräche”, the speakers did not comment on this. It therefore remains exciting whether Düsseldorf will follow the line from Mannheim.

In addition, the question may arise in the future as to in which cases courts will order additional measures pursuant to Sec. 19 (1) Trade Secrets Protection Act. In the present decision, the Regional Court Mannheim ordered additional measures within the framework of the required consideration. In doing so, the court referred in particular to the fact that the financial information and rendering of accounts were only for a specific purpose and therefore a restriction to the group of persons did not represent a disadvantage for the plaintiff. Only the future will show whether other courts will also take into account the purpose of the financial information and rendering of accounts. It will also be interesting to see how the interests of the parties will be weighed in the main proceedings in the future. However, the parties can avoid these questions from the outset, for example by agreeing on the restriction of persons out of court.

Carsten Plaga