Background

In September 2020, the Federal Procurement Office at the Federal Office of Bundeswehr Equipment, Information Technology and In-Service Support (BAAINBw) announced that the company C.G. Haenel had emerged as the winner of the award procedure for the “Assault Rifle System Project”. In response, an unsuccessful competitor claimed to the awarding authority that the company C.G. Haenel had infringed patent rights. Due to the strategic importance of the project, the BAAINBw then decided to examine the reservations. A patent attorney was commissioned to prepare an expert opinion regarding a possible patent infringement.

On 18 December, the BAAINBw announced that the expert opinion was now available. The patent attorney concludes that C.G. Haenel “may” have infringed a patent in his offered MK 556 weapon. However, the patent attorney did not deal with the question of the patent’s invalidity, as instructed.

The BAAINBw has given C.G. Haenel the opportunity to comment on the results of the patent law assessment by mid-January. For this purpose, C.G. Haenel has obtained an expert opinion from Prof. Dr. Christian Donle, attorney-at-law and specialist in intellectual property law, from the law firm Preu Bohlig & Partner, Berlin. The subject matter of this expert opinion is, on the one hand, the patent law and technical correctness of the expert opinion on an alleged patent infringement by MK556 and, on the other hand, the invalidity of the patent at issue. At the same time, C.G. Haenel has asked the law firm BLOMSTEIN to examine the matter in terms of public procurement law.

Conclusions of C.G. Haenel

– C.G. Haenel has at no time committed any serious professional misconduct that could cast doubt on the integrity of the company. The expert opinion commissioned by the BMVg lacks expert content that would have been absolutely necessary to prove serious misconduct.

– The accusation of patent infringement essentially relates to the so-called over-the-beach capability of the rifle to be procured. In simple terms, this is the ability of the weapon to be immediately operational again even after water penetration. C.G. Hanel has ensured this ability by way of a technical solution that indisputably does not infringe any patents. The patent infringement alleged in the expert opinion relates exclusively to the existence of a technical provision in the MK556 rifle that is independent of it, which not even the competitor itself considers relevant in the sense of the patent and has not made the subject of a warning notice. However, this technical provision taken up in the expert opinion corresponds to the absolute state of the art, which has already been found in various rifles of international manufacturers for decades. A patent infringement is ruled out here.

– It is further noted that no litigation is currently pending between C.G. Haenel and Heckler & Koch regarding the MK556 rifle offered by C.G. Haenel. The patent proceedings considered by the BMVg’s expert opinion refer either to the CR223 rifle, which has a completely different design with regard to the relevant technical features, or to the decision of the Düsseldorf Regional Court of 20 November 2020. The LG Düsseldorf expressly stated with regard to MK556 that “litigation is not yet pending with regard to the disputed form”. Heckler & Koch has neither initiated patent proceedings on the merits nor preliminary injunction proceedings with regard to the MK556. C.G. Haenel has not even received a warning in this regard.

– The alleged patent infringement according to the second expert opinion on the spare part “magazine” has no relevance for C.G. Haenel. At no point did the company make the magazine released for review the subject of the offer. It is therefore not apparent to what extent an alleged patent infringement should have an effect.

– For this reason, the expert opinion commissioned by C.G. Haenel comes to the clear conclusion that there is no patent infringement. A corresponding patent would be null and void in any case. Excluding the company from the tender procedure on this basis would be unlawful.