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

Abstract

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.