Sponsored briefing: German interlocutory injunction proceedings in patent matters under review of CJEU

Clemens Rübel discusses patent matters under review by the CJEU in Germany

The requirements of granting interlocutory injunctions in patent infringement proceedings developed over many years by the German Higher Regional Courts will be subject to review by the CJEU. The legal question referred by the Munich judges in a decision on 19 January 2021¹ is, whether it is in line with art 9 (1) of Directive 2004/48/EC (Enforcement Directive) that in interlocutory infringement proceedings provisional measures should be denied if the asserted patent has not survived first instance opposition or nullity proceedings.

Bifurcated system

Infringement and validity of a patent are subject to two separate proceedings in Germany. While the civil courts (Regional Courts and Higher Regional Courts) establish whether an attacked embodiment infringes the claims of a patent, it is in the exclusive competence of the European Patent Office (EPO) or the Federal Patent Court (FPC) to revoke a patent in opposition or nullity proceedings. In main infringement proceedings on the merits, the civil courts are not entitled to dismiss the action due to alleged invalidity of the patent. The courts can only stay the proceedings pending the outcome of an opposition or nullity action. They rely on the examination of the patent office before grant of the patent. A stay of the infringement proceedings is in principle only ordered if the defendant asserts prior art that has not been considered during the patent examination and that the court considers as novelty destroying. These requirements are difficult to meet for the defendant. For this reason and because the validity proceedings are typically slower than the infringement proceedings, the plaintiff often obtains a preliminarily enforceable injunction in main actions on the merits before the validity is decided (so called ‘injunction gap’).

Interlocutory injunction proceedings

The rules are different in interlocutory injunction proceedings. The grant of an interlocutory injunction can be dismissed by the civil court due to strict requirement to demonstrate the validity of the asserted patent. The court makes a discretionary decision in the form of summary judgment proceedings, taking into account the urgency of the matter and the likelihood of infringement also.

The high standard set to the validity of the asserted patent for granting an interlocutory injunction has been subject to case law of the major patent infringement chambers of the civil courts. A widely applied decision of the Higher Regional Court Düsseldorf² held that in principle the grant of an interlocutory injunction requires that the patent-in-suit has survived contested validity proceedings (opposition or nullity action). Subsequently, other important patent infringement forums such as Karlsruhe³ (Appeal Court for Mannheim) and Munich⁴ followed the Düsseldorf Court.

The rationale underlying the requirement for a strict basis for validity is the lack of time for the court to assess and decide a technically complex matter. Interlocutory proceedings move on a compressed timescale, putting the defendant in a disadvantageous procedural position combined with a massive economic risk. Whilst the patentee has more time to prepare an application for the interlocutory injunction (say, about a month or so), the defendant is only given a short time to respond, therefore being insufficient time to conduct a thorough prior art search in order to prepare a validity attack. There is also insufficient time to enable the defendant to develop a work-around solution or negotiate alternatives with his suppliers and customers.

Whilst the patentee has more time to prepare an application for the interlocutory injunction, the defendant is only given a short time to respond.

The general requirement to show that the patent has survived contested validity proceedings, can be set aside only on an exceptional basis such as where the patent has been successfully enforced against competitors who have not challenged the validity. There are also cases, in which the irreparable harm that will be incurred by the plaintiff is so huge, if the injunction is not rendered very quickly, then the plaintiff cannot be expected to wait for the outcome of proceedings on the merits. A typical example may be where a generic launches just before the relevant blockbuster drug patent is about to expire.

Referral of the Regional Court of Munich to the CJEU

The Regional Court of Munich considers that the general requirement for the asserted patent to have survived contested validity proceedings for the issuance of interlocutory injunction, contravenes the Enforcement Directive. This principle devalues newly granted patents, which cannot have been part of validity proceedings. Oppositions and nullity actions can only be filed after grant of the patent and take about one to three years to reach a first instance decision. It is also not up to the patentee as to whether the validity of the patent is challenged by a third party.

Conclusion

Concurring with the Munich judges, the present strict requirement on validity might lead to arbitrary results. A recently granted patent can be a strong patent, too, warranting an interlocutory injunction in certain circumstances. The patent examiners of the patent offices know the prior art very well and have excellent searching tools, which ensures that patents that are granted have overall a solid basis for validity. On the other hand, oppositions are not always prepared with utmost thoroughness. Many oppositions are filed as a routine, for training purposes or even anonymously by the holder of the patent itself. A positive outcome of an opposition is therefore not always a clear indicator of the strength of the patent.

The reluctance of the courts to grant interlocutory injunctions with serious consequences for the defendant and potentially irreversible damage without a clear basis for the validity of the asserted patent is understandable. However, the situation in interlocutory injunction proceedings is not much different to the situation in main proceedings on the merits. Due to the aforementioned injunction gap, the infringement courts are accustomed to granting injunctions before the validity is clarified in contested validity proceedings. The consequences of a quickly enforced decision on the merits is equally harsh to the defendant, above all, if the injunction gap is, as often the case, considerably lengthy. Thus, it is somewhat inconsistent for there to be such a huge difference in standard to demonstrate the likely validity of the patent between an application for an interlocutory injunction and a claim for an injunction at the end of the main infringement proceedings. A balance may be struck by imposing an obligation to provide significant security on the plaintiff, as a condition to enforce the injunction order.

About the author

Clemens Rübel is a lawyer based in Munich, focusing on patent infringement and nullity actions. He has advised in the following sectors: electrical engineering and telecommunications; medical devices; pharmaceuticals; mechanical and plant engineering; automotive; sports equipment; and the building sector. Rübel regularly works with our worldwide network of patent professionals and provides clients with customised enforcement strategies. Rübel is very familiar with the particular requirements and preferences of the patent courts in Düsseldorf, Mannheim, Munich, Frankfurt and Hamburg. He also conducts oppositions at the European Patent Office and the German Patent and Trademark Office. Rübel’s clients include leading international companies, as well as innovative medium-sized enterprises. In addition to patent law, Rübel focuses on the new German Trade Secrets Act 2019, employee invention law, design law, competition law and license rights. His forensic experience proves beneficial in out-of-court activities such as freedom-to-operate opinions or when supporting M&A teams in transactions.