Patent infringement – German court practice on preliminary injunctions put to the test before the Court of Justice of the European Union

In the event of infringement of a patent, German courts regularly refuse preliminary legal protection (“preliminary injunctions”) if the validity of the patent has not yet been confirmed in opposition or nullity proceedings. The Munich Regional Court would now like the Court of Justice of the European Union (CJEU) to check whether this practice is compatible with higher-ranking European law.

Preliminary injunctions are of enormous importance for the protection of intellectual property rights. In urgent cases, owners of intellectual property rights can apply for a preliminary injunction instead of or in parallel with proceedings on the merits. German courts act quickly: In trademark, design and competition matters, courts regularly issue preliminary injunctions within a few days, sometimes even within hours, and usually without hearing the opposing party beforehand. Germany is both envied and feared abroad for this legal practice.

“Scrutinized” patents as a prerequisite for preliminary injunctions

However, the situation is different in the case of patent infringement: the issuance of a preliminary injunction generally requires – in addition to the proven infringement of the patent and a particular urgency of the case – that the validity of the patent has been sufficiently established. According to the current case law of the higher regional courts (Germany’s appeal courts), it is not sufficient for the granting authority to have granted the asserted patent after a thorough examination. On the contrary, most courts, especially the highly-esteemed courts in Dusseldorf and Karlsruhe, require that the patent has survived first-instance opposition or revocation proceedings before a preliminary injunction can be issued.

As a result, patentees generally only receive interim legal protection if their patent has obtained the “seal of approval” of having survived adversaryvalidity proceedings. The courts apparently do not fully trust the patent offices to have reliably assessed patentability in the granting procedure alone.

Munich Regional Court: Court practice is contrary to EU law

A patent litigation chamber at Munich Regional Court considers this interpretation to be contrary to European Union law, and therefore has recently referred the matter to the Court of Justice of the European Union (LG München I, order of January 19, 2021 – 21 O 16782/20). According to Art. 9(1) of the European Enforcement Directive 2004/48/EC, EU Member States must ensure that a provisional injunction may be ordered against a patent infringer in order to prohibit the continuation of a patent infringement. However, according to the established case law of the higher regional courts outlined above, this is oftentimes not possible, because a patent which has only just been granted – as in the present case – may not yet have been subject to validity proceedings.

In-depth technical examination before issuance

The Munich judges point out that even patents granted a long time ago have often not yet been tested in such adversary validity proceedings at the time of the application for a preliminary injunction. The patent proprietor naturally has no influence on whether his patent is attacked in opposition or nullity proceedings after it has been granted. Therefore, even in acute infringement cases, provisional injunctions can only be issued once validity proceedings have been concluded at first instance. This could take many months or even years. The continuation of the patent infringement would have to be accepted during this time according to the case law put up for review, despite the fact that patents – unlike other intellectual property rights – are subject to a detailed technical examination before they can be granted.

Systemic Weaknesses of Interim Legal Protection in Patent Disputes

No matter how the European judges in Luxembourg may judge the current German legal practice, their decision will most likely not cure all the existing weaknesses of the system of preliminary injunction proceedings. The examination of a patent infringement, namely the exact determination of the patent-protected subject-matter and the infringement analysis, is difficult even for experienced judges, and often hardly suitable for preliminary injunction proceedings, in which only a summary examination can ever be carried out in the shortest possible time. However, judges do not have the option to refuse to issue a preliminary injunction merely because the subject-matter and factual issues to be addressed are too complex. As a result, wrong decisions are inevitable. The courts are also bound by the legal status of the patent and cannot refuse to issue a preliminary injunction even where reasonable doubts exist, unless opposition or nullity proceedings are already pending. It is true that the courts may require a security bond from the patent proprietor for the execution of a preliminary injunction. However, the damage caused by a wrongfully issued preliminary injunction is usually irreparable: if a manufacturer is prevented from presenting their product innovation at a leading trade show because of alleged patent infringement, it is of little use to him if the preliminary injunction is lifted months or years later. The product will no longer find a buyer.