Higher Regional Court (OLG) Düsseldorf: Inspection procedure during pending public procurement procedure

Higher Regional Court Düsseldorf, decision dated 23 March 2022 – docket no. 15 W 14/21

The 15th Civil Chamber of the Higher Regional Court Düsseldorf has ruled in a decision dated 23 March (docket no. 15 W 14/21) that legal action can be taken before the civil courts even during an ongoing procurement procedure for applications to carry out an inspection procedure as well as acquiescence orders. The court also held in the specific case that “testing” constitutes an act of infringement within the meaning of section 9, sentence 2, no. 1 of the Patent Act, and that an inspection is required also at the premises of the recipient of the samples.

I. THE FACTS

The applicant is the owner of a patent relating to a weapon breech system. Like the first defendant, they took part in a Europe-wide public invitation to tender for the manufacture and supply of assault rifles (public procurement procedure) which was issued by the second defendant.

After the respondent to 2) had carried out comparative tests and sampling of the samples submitted by the first defendant, it announced that it intended to award the contract to the first defendant. After the second defendant had carried out comparative tests of the samples submitted by the first defendant, the second defendant announced their intention to accept the first defendant’s tender.

On the applicant’s motion for the order of an inspection procedure and the issuance of an acquiescence and protective order against both defendants, the Düsseldorf Regional Court ordered the inspection procedure only against the first defendant on 20 November 2020, which was carried out in December 2020. The survey procedure was carried out in December 2020.

A further request to conduct independent evidence proceedings against the defendant to The Regional Court dismissed a further application to conduct independent evidentiary proceedings against the second defendant in its decision on 17 August 2021. The applicant’s appeal was dismissed by the court in its decision dated 31 August 2021. The court justified its decision by stating that it was not competent and that, in addition, the inspection was not necessary, because an inspection at the first defendant was possible.

The Higher Regional Court partially amended the order and reworded it. The Düsseldorf Higher Regional Court dismissed the remaining appeal.

II. THE DECISION

1. COMPETENCE FOR INSPECTION PROCEDURE PERSISTS DESPITE ONGOING PUBLIC PROCUREMENT PROCEDURE

The Higher Regional Court ruled that it was competent to decide on motions for the conduct of inspection proceedings as well as acquiescence orders even during pending public procurement proceedings.

The special exclusive assignment imposed by section 156 para. 2 of the Act against Restraints of Competition (GWB) does not oppose its competence, since the motion to conduct an inspection procedure is not founded on a “claim” within the meaning of the provision. “Other claims” within the meaning of Section 156 of the GWB could also be legal provisions under non-procurement law which grant subjective rights and have a connection to the public procurement procedure. In particular, section 124 para. 1 no. 3 GWB, which governs the exclusion of companies from the procurement procedure due to serious misconduct, could also be used to assess a patent infringement in an incidental manner. However, the special allocation of section 156 para. 2 GWB does not apply to such claims which are not aimed at the protection of primary rights in the procurement procedure. However, the inspection claim which was motioned for was merely aimed at the preparation of patent law claims. In this respect, the civil courts were competent in parallel. The enforcement of patent claims should not be suspended during pending public procurement proceedings.

2. SAMPLING AND TESTING DURING THE PUBLIC PROCUREMENT PROCEDURE MAY CONSTITUTE PATENT-INFRINGING USE WITHIN THE MEANING OF SECTION 9 SENTENCE 2 NO. 1 OF THE PATENT ACT.

The Higher Regional Court further held that the sampling and testing of a patent-infringing object during the public procurement procedure may constitute “using” within the meaning of section 9, sentence 2, no. 1 of the Patent Act.

“Using” within the meaning of section 9, sentence 2, no. 1 of the Patent Act is to be interpreted broadly and encompasses any reasonable use in the broadest sense of any intended purpose. In the case of product patents, the designated use – in this case, military use – was not relevant.

Moreover, testing is not privileged under section 11 no. 2 of the Patent Act. Only the acquisition of knowledge about the subject-matter of the invention is privileged. However, in the public procurement procedure, the tests did not serve technical progress, but merely the assertion of competitive purposes.

3. THE INSPECTION WAS NECESSARY

Moreover, the inspection was necessary because a military weapon cannot be purchased on the public market. In addition, an inspection conducted at the first defendant’s premises would not have been equally effective. During the inspection at the first defendant, the applicant found various drawings showing different designs as well as embodiments that matched the most recent drawing made on the day on which the drawings and samples were handed over. 1) would not have been equally suitable. During the inspection at the respondent’s premises, the applicant had to 1) During the inspection at the first defendant, the applicant found various drawings showing different designs as well as embodiments that matched the most recent drawing made on the day on which the drawings and samples were handed over. Since drawings are usually created first and only then reproduced, it seems likely that other, older designs could be found with 2) the second defendant than with the first defendant.

Dr Benedikt Walesch