A product manufacturer cannot, through a lawsuit before the competition courts, achieve the deletion of information about alleged disadvantages of that product from the patent specification of a patent granted to a competitor. This was decided by the I. Civil Senate of the Federal Court of Justice, which is responsible, among other things, for competition law.
The defendant, who, 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 granting procedures, it specified the state of the art known for this technical field. In this context, it cited a European patent specification and outlined specific disadvantages of the tear-off lid manufactured by the plaintiff according to this patent specification. It then described the problem to be solved by its own invention: to create a tear-off lid that did not exhibit the aforementioned disadvantages of the plaintiff's known lid. The patent was granted to the defendant in June 2002. The patent specification was published at the end of 2003.
The plaintiff considers the statements regarding the alleged disadvantages of the tear-off lid it manufactures, as presented in the defendant's patent application, to be incorrect. The plaintiff argues that the defendant thereby unlawfully disparages the plaintiff's product, violating Section 4 No. 8 of the Act Against Unfair Competition (UWG). According to this provision, asserting facts about competitors that are damaging to business and not demonstrably true constitutes unfair competition. With its action, the plaintiff demanded that the defendant cease such assertions and, by submitting corresponding declarations to the German Patent and Trade Mark Office, effect the deletion of the contested statements in the patent specification. Furthermore, the plaintiff served notice of intervention on the Federal Republic of Germany, which – represented by the German Patent and Trade Mark Office – joined the lawsuit on the side of the defendant.
The Regional Court of Dresden took evidence on the correctness of the statements contested by the plaintiff by obtaining an expert opinion and subsequently partially granted the action. The Higher Regional Court of Dresden ruled entirely against the defendant. The Federal Court of Justice, upon the defendant's appeal on points of law, overturned the decisions of the lower courts and dismissed the action in its entirety.
According to the Federal Court of Justice, the question of which information must be included in the version of the patent application, on the basis of which the patent was granted and which is published as part of the patent specification, is governed exclusively by the legal provisions of the Patent Act applicable to patent granting. Legal disputes concerning this matter must be resolved in the procedures provided for this purpose under the Patent Act. Legal enforcement before the ordinary courts is incompatible with the requirements of a proper patent granting procedure, which is separately regulated in the Patent Act. An action that seeks to influence the patent grant or the further legal fate of a granted patent outside the procedural rules provided by the Patent Act – as in the present case – is therefore already inadmissible. While the Federal Court of Justice deemed the plaintiff's claim for an injunction against the contested statements, even outside a patent application, to be admissible, it dismissed it as unfounded. The plaintiff had not submitted that the defendant intended to make the detrimental statements about the plaintiff's product outside the patent granting procedure as well.
Judgment of the Federal Court of Justice of December 10, 2009 – I ZR 46/07 – Fish Can Lid
Lower Courts:
Higher Regional Court of Dresden – Judgment of January 16, 2007 – 14 U 2141/05
Regional Court of Dresden – Judgment of november 18, 2006 – 45 O 390/03
Source:Press release of the Federal Court of Justice
Goldberg Rechtsanwälte
Attorney Michael Ullrich, LL.M. (Information Law)
Specialist Lawyer for Information Technology Law (IT Law)
Email: info@goldberg.de
