Assault rifle procurement debate leads to patent infringement suit
The German Armed Forces has changed its choice of assault rifle manufacturer, from long-standing supplier Heckler & Koch to C.G. Haenel. The latter is the German subsidiary of a UAE corporation. But Heckler & Koch is fighting the contract decision with all its might; new patent law accusations could be the turning point.
22 October 2020 by Christina Schulze
Technically, assault rifles are very similar - but the decision regarding a supplier is highly political ©filmbildfabrik/ADOBE STOCK
For 60 years, the German Armed Forces’ assault rifle supplier was Heckler & Koch. However, the close relationship has deteriorated. Now, in a break from tradition, the army has awarded the contract to C.G. Haenel, a traditional German company known for hunting rifles.
But this has culminated in Heckler & Koch filing a patent infringement suit against C.G. Haenel at the Düsseldorf Regional Court. The prestigious procurement of the new standard firearms could get interesting.
Back and forth
During another weapons purchase, insiders from the forces openly spoke ill of Heckler & Koch. However, security concerns were also raised about C.G. Haenel. This is because the manufacturer is part of the German Merkel Group, owned by UAE-based defence corporation Tawazun. The company’s provenance prompted the raising of security concerns.
Furthermore, for Heckler & Koch, the decision to change suppliers is economically problematic. The company filed an application for review under public procurement law; now the German Armed Forces procurement authority (Federal Office of Bundeswehr Equipment, Information Technology and In-Service Support, or BAAINBw) must comprehensively review the awarding of the contract. Meanwhile, Heckler & Koch filed a patent infringement suit against their competitor at Düsseldorf Regional Court.
EP 20 18 508 B1 protects a rifle-locking system and names well-known weapons developer Robert Hirt, from Heckler & Koch, as one of its six inventors. However, now Hirt works for Caracal – also a subsidiary of Tawazun. Several years ago, the company hired Hirt along with other developers to design an assault rifle.
Personnel interweave
In addition to this switching of counsel, interesting case law at Düsseldorf Higher Regional Court also plays a role. In cases in 1996 and 2005, among others, the court ruled that an awarding authority must examine whether possible infringements of industrial property rights restrict a bidder’s ability to deliver. This could impact a supplier’s suitability. However, this does not necessarily mean that the awarding authority must wait for the outcome of a patent dispute in court as this can take several years.
But the awarding authority must assess the risk that the dispute poses to manufacturers’ ability to deliver. This is especially if the patent judges arrive at a different assessment of the situation than decided by the awarding authority. The patent law allegations could fundamentally impact the awarding of the assault rifle manufacturing contract.
The main question is whether C.G. Haenel informed the German Armed Forces procurement authority, in good time and enough detail, about potential disputes over industrial property rights. This is an obligation under public procurement law, as a potential property rights dispute could restrict the ability to deliver.
Klaus Haft
Relying and approaching
Some press reports state that C.G. Haenel is now excluded from the delivery. However, such reports are just as incorrect as those claiming Heckler & Koch is now the supplier.
Furthermore, a source told JUVE Patent that it is very likely that the German Armed Forces will choose one of these two manufacturers.
Since the beginning of the proceedings, a public procurement law team from CBH led by Stefan Hertwig has represented Heckler & Koch. However, Heckler & Koch did not rely on the firm’s patent experts to file the patent infringement suit.
Instead, the firm hired IP firm Hoyng ROKH Monegier and patent attorney firm Samson & Partner. Partner Friedrich Samson-Himmelstjerna filed the patent for Heckler & Koch in 2007.
Roland Stein’s team of public procurement lawyers, Blomstein, represents C.G. Haenel. The Berlin boutique is known for its defence sector expertise and has litigated for German Naval Yards in an economically-significant case. However, according to reports, C.G. Haenel has not yet appointed a representative for the patent infringement proceedings.
Vertreter Heckler & Koch
Hoyng ROKH Monegier (Düsseldorf): Klaus Haft (lead, partner), Mirko Weinert; associates: Max von Leitner, Larissa Otten
Samson & Partner (München): Friedrich Samson-Himmelstjerna, Ralf Haft (both patent attorneys)
CBH Rechtsanwälte (Köln): Stefan Hertwig, Andreas Haupt (both procurement law), Andrea Heuser (corporate), Martin Quodbach (patent law); associates: Lara Itschert, Kristin Hacky (both procurement law)
For C.G. Haenel
For Federal Office of Bundeswehr Equipment, Information Technology and In-Service Support (BAAINBw)
KDU Krist Deller & Partner (Koblenz): Matthias Krist (procurement law)
This article originally appeared in German on www.juve.de.
