Action against adverse statements in patent specification inadmissible

A manufacturer of a product cannot bring an action before the competition courts to have information on alleged disadvantages of a patent granted to a competitor deleted from the patent specification. This was decided by the First Civil Senate of the Federal Court of Justice, which is responsible for competition law, among other things.

The defendant, which, like the plaintiff, manufactures lids for fish cans, filed a patent application in September 1993 for a tear-off lid made of sheet metal for a can. In the application, as is prescribed and customary in patent grant proceedings, it cited the known prior art in this technical field. In this context, it named a European patent specification and described individual disadvantages of the tear-off lid manufactured by the applicant according to this patent specification. She then described the problem to be solved by her own invention: the aim was to create a tear-off lid which did not have the disadvantages of the plaintiff's known lid mentioned above. The patent was granted to the defendant in June 2002. The patent specification was published at the end of 2003.

The plaintiff considers the information about the alleged disadvantages of the tear-off lid manufactured by it in the defendant's patent application to be incorrect. The defendant therefore disparages the plaintiff's product in an impermissible manner and thus violates § 4 No. 8 of the Unfair Competition Act (UWG). According to this provision, the assertion of facts about competitors that are not demonstrably true and damaging to business is unfair. In its action, it demanded that the defendant refrain from making such allegations and, by submitting corresponding declarations to the German Patent and Trade Mark Office, have the objectionable statements in the patent specification deleted. It also served notice of the dispute on the Federal Republic of Germany, which - represented by the German Patent and Trade Mark Office - intervened in the dispute on the side of the defendant.

The Regional Court of Dresden took evidence on the accuracy of the statements objected to by the plaintiff by obtaining an expert opinion and then partially granted the claim. The Dresden Higher Regional Court ruled against the defendant in its entirety. On appeal by the defendant, the Federal Supreme Court overturned the decisions of the lower courts and dismissed the action in its entirety.

In the opinion of the Federal Court of Justice, the question of what information is to be included in the version of the patent application on the basis of which the patent has been granted and which is published as part of the patent specification is governed exclusively by the legal provisions of the Patent Act applicable to the grant of a patent. Legal disputes thereon shall be settled in the proceedings provided for that purpose under the Patent Law. Legal action before the ordinary courts is not compatible with the requirements of a proper patent granting procedure separately regulated in the Patent Act. An action which - as in the present legal dispute - is intended to influence the grant of a patent or the further legal fate of a granted patent outside the rules of procedure provided by the Patent Act is therefore already inadmissible. Insofar as the plaintiff sought an injunction to cease and desist from making the statements complained of even outside the scope of a patent application, the Federal Court of Justice considered the action to be admissible. However, it dismissed it as unfounded. The plaintiff had not argued that the defendant intended to make the adverse statements about the plaintiff's product outside the patent grant proceedings.

 

Judgment of the Federal Court of Justice of 10 December 2009 - I ZR 46/07 - Fish can lid

Lower courts:

Dresden Higher Regional Court - Judgment of 16 January 2007 - 14 U 2141/05

LG Dresden - Judgment of 18 November 2006 - 45 O 390/03

 

Source:Press release of the BGH

 

Goldberg Attorneys at Law

Attorney at Law Michael Ullrich, LL.M. (Information Law)

Specialist lawyer for information technology law (IT law)

E-mail: info@goldberg.de

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