Patent litigation in Practice Series: Spotlight on Germany: Trade secret protection in German patent infringement proceedings

In times of globalisation and digitalisation, trade secrets are an important economic asset. Trade secrets and their protection are therefore of paramount importance. For a long time, there was no comprehensive regulation of the protection of trade secrets under civil law in Germany. Therefore, when legal proceedings in Germany involved trade secrets, there was always the dilemma: either lose the case or lose your trade secret. There were indeed provisions that regulated the protection of trade secrets from the public or third parties (such as Sec. 172 No. 2 and Sec. 174 (3) of the German Code on Court Constitution). However, German law did not provide any provisions for the protection of trade secrets against an opposing party in litigation. 

German Trade Secret Act

The German legislator recognised this fact when implementing Directive (EU) 2016/943 (“Trade Secrets Directive”) and created a formalised procedure as well as a system for bringing claims in the event of the violation of trade secrets. The legislator emphasised the need to protect trade secrets during proceedings and the particular importance of corresponding procedural regulations. In April 2019, the German Trade Secret Act (“GTSA”) came into force. 

Relevant provisions of the GTSA in patent litigation 

• Sec. 16 allows the court, at the request of a party, to classify all or part of the information in dispute as confidential, which must then be treated confidentially by the parties involved. 
  
• Sec. 17 provides for sanctions in the event of a breach of the confidentiality obligation. 
•  Under Sec. 18, the confidentiality obligations continue to apply even after the conclusion of the court proceedings.
• Under Sec 19 further judicial restrictions, such as limiting the number of persons who have access (i) to the information classified as confidential and/or (ii) to the hearing, or the exclusion of the public, can be ordered.
• Sec. 20 contains some procedural provisions for measures pursuant to Sec. 16-19 GTSA.

Procedural protection of trade secrets in patent litigation

The legislator recognised relatively quickly that the procedural provisions of the GTSA can also be expedient, if not necessary, beyond proceedings under the GTSA. In August 2021, the Second Act on the Simplification and Modernisation of Patent Law came into force which introduced Sec. 145a German Patent Act (“GPA”). Under this provision, Sec. 16-20 GTSA are to be applied in patent litigation. The procedural protection of trade secrets was therefore expressly declared applicable in the GPA.

The applicability of Sec. 16-20 GTSA in patent litigation is to be welcomed, as there is also a special need for procedural protection of trade secrets in patent litigation. Further, information relevant to patent litigation often also involves trade secrets…