5.6.8 Confidentiality
Protecting parties’ confidential information is a critical aspect in many patent infringement actions. While a discovery-based system conceptually provides for a sophisticated confidentiality regime in the form of protective orders or similar instruments, this is not the case in the German legal system, which does not provide for any general pretrial discovery. Thus, originally, the only statutory regime for protecting confidential information was provided for in the Courts Constitution Act, particularly in Sections 172–174. These provisions are exceptions to the general principle that all court hearings need to be public (Section 169 of the Courts Constitution Act). On this basis, the court can exclude the public from a hearing if confidential business information is discussed. The parties and their attorneys can remain in the hearing, but all people attending can be subjected to a confidentiality order (Section 174(3) of the Courts Constitution Act) whose breach triggers a criminal liability (Section 353d(2) of the Criminal Code).153
This regime has been frequently used to protect not only technical information but also business information (e.g., in FRAND cases). However, the regime within the Courts Constitution Act has its obvious shortcomings, because the court cannot order confidentiality ahead of a hearing, so the function of the front-loaded proceedings, with the focus on the written briefs, is impaired. These issues have been addressed by way of Section 145a of the Patent Act, which was very recently enacted.154 In referring to the recent statute on the protection of confidential business information (Sections 16–20 of the Trade Secrets Protection Act), Section 145a of the Patent Act gives the court sufficient flexibility and discretion to order suitable regimes for protecting confidential information already in the initial stages of the proceedings. Based on a request from any of the parties, the court can issue protective orders according to which certain information ought to be kept confidential. This encompasses any information that has been introduced into the proceedings if it could qualify as a trade secret or confidential business information. All individuals that are part of the proceedings (parties, outside counsel, experts and witnesses) and all third parties that have access to the documents of the proceedings are bound by the order. The court can also limit access to confidential information, contained in documents submitted by the parties or by third parties, to a certain number of individuals.
The same is true for the attendance of the oral hearing in which this information is to be discussed. However, at least one individual of each party and each party’s outside counsel must have access (Section 19(1)). Sanctions for violation of the orders are limited to fines of EUR 100,000 or up to six months’ detention.