This already begins with the fact that in the protection of industrial property rights extensive claims for information are granted by the holder of the right against the infringer. However, there is no regulation on how the rightholder has to deal with the information once granted. There is therefore no limitation on the use of the information provided. The obligation to provide information is intended solely for the purpose of calculating damages. In fact, the recipient of the information may also use (misuse) this information about customers, production costs, supply chains, etc. of his competitor for any other purpose, for example to offer the competitor competition with this information or to entice away his customers. So far, the legislator has seen no reason to limit the possible uses. While data protection is written in capital letters everywhere, and there are restrictions on use and deletion obligations, the legislator is opening up a large data leakage at this sensitive point.
No less difficult is the handling of technical or commercial secrets during legal proceedings. It is true that there are rudimentary regulations in § 172 GVG, which regulate the exclusion of the public during the oral proceedings as well as the restriction of the inspection of files by third parties. Nevertheless, these provisions are not suitable to enable the protection of secrets and restrictions of use, especially vis-à-vis the opposing party.
In the GeschGehG, the legislator, based on the Directive, for the first time gave the courts the possibility to order reasonable and efficient secrecy measures. Thus, information can be classified as confidential and this information may not be used outside the proceedings or disclosed to third parties. The court may also restrict the access of litigants to such secrets.
Regrettably, the legislator has (without necessity) limited the scope of these standards to proceedings under the GeschGehG. Especially in patent litigation (and certainly in many other cases as well) these provisions are therefore (for the time being) not directly applicable. It is true that the discussion draft of the 2nd Patent Law Modernisation Act (new § 145 a) provides that §§ 16 et seq. of the GeschGehG shall be applied accordingly in patent litigation. However, until its entry into force there are still no adequate legal rules on the handling of information requiring secrecy.
In practice, litigants have in recent years often proceeded in such a way that confidentiality agreements have been concluded between the parties during the proceedings. The obvious disadvantage of such a solution is that it is only possible voluntarily and does not work in practice if one party demands unreasonable conditions or the other party does not wish to submit to reasonable confidentiality conditions.
In some cases, it has happened that in the absence of such an in-process confidentiality agreement, one party has handed over documents requiring confidentiality to the court, while the other party has only been handed over blackened versions. It is obvious that this approach is not compatible with the right to a fair trial and the right to be heard.
This has now been confirmed in a recently announced decision of the Federal Court of Justice (BGH) of 14 January 2020 – X ZR 33/19 – Inspection of Files XXIV. The decision was based on facts in which one party had handed over complete documents to the court, but only blackened versions to the other party. The BGH considered this procedure to be inadmissible. The submission of documents is a procedural act which is in principle unconditional. Thus, the submission of annexes could not take place in such a way that the opposing party was granted access to a copy only on condition that a specific confidentiality agreement was concluded. The BGH stated that such conditionally submitted documents do not become part of the file and therefore the court cannot base its decision on them.
The decision did not further discuss the obvious question of whether the court may not take note of these documents either and must return/destroy them immediately. After all, the fair procedure and the right to be heard do not only require that these documents are not/do not formally become part of the file. The other party is of little help in claiming a fair trial if these documents are nevertheless read by the court and are physically present in a special booklet alongside the court file and, if necessary, are the subject of consultation.
This constellation thus demonstrates the urgent need for sensible legal regulations for dealing with secrets in civil proceedings so that such questions do not arise in the first place.
