Clifford Chance

I. Preliminary injunctions in patent infringement proceedings in Germany – an exception?

According to recital 22 of the Directive, an important instrument for ensuring effective protection of intellectual property ("IP") in the EU is the obligation on member states to provide IP proprietors with "provisional measures for the immediate termination of infringements, without awaiting a decision on the substance of the case".

In Germany, the primary provisional enforcement measures available to rights holders are preliminary injunction ("PI") proceedings. In order to substantiate a cease-and-desist claim, (i) the patent infringement must be probable, (ii) the preliminary proceedings have to be urgent and (iii) the validity of the patent-in-suit has to be sufficiently secured. The latter requirement caters to the fact that a patent may be challenged by anyone at any time during its term. In addition, the complexity of the subject matter requires a balancing of interests between averting irreparable damages for the patent holder while still providing effective legal protection for the alleged infringer.

Under German case law, the courts have dealt with the special urgency and limited technical competence available in PI proceedings by partially outsourcing their prognosis on patent validity: they established that the patent-in-suit regularly had to have survived the first instance in any patent validity proceedings to serve as the basis for a PI. Consequently, only relatively few patent holders benefited from interim protection in Germany¹.

It was only in the south of Germany where the Higher Regional Court of Munich had previously taken a less absolute approach. However, in December 2019, that court also adapted a more restrictive stance by requiring the patent to have been confirmed in opposition or nullity proceedings (GRUR 2020, 385 – Elektrische Anschlussklemme). This prompted the 21st Civil Division of the District Court of Munich I to request a preliminary decision before the CJEU. The court considered that the changed jurisdiction precluded them from issuing a PI even though they had reached the preliminary conclusion that the patent at issue was valid and had been infringed. Therefore, the court raised the question of whether this practice was compliant with Article 9 (1) IPRED.

II. The CJEU's decision and its ramifications for German patent litigation

The CJEU confirmed the concerns raised by the District Court of Munich I. It held the previous German case law to be incompatible with Art. 9 (1) IPRED as the prior confirmation of the patent in validity proceedings imposes an additional prerequisite for PIs and thereby undermines the Directive's aim of ensuring a high level of protection for IP. To support their conclusion, the CJEU pointed to the possible scenario where potential infringers could deliberately refrain from challenging the validity of a patent to hinder its preliminary enforcement. Furthermore, the CJEU emphasized that there are other remedies available to mitigate the risks for the alleged infringer (e.g., the provision of adequate security by the applicant to compensate damages if the PI later proves unfounded).

Although this decision is viewed critically in some of the German literature², a significant change in case law is to be expected since the CJEU explicitly stated that national courts must adhere to its interpretation.

First and foremost, the number of PI applications could significantly increase as patent holders may assert patents without having to await a decision in first instance validity proceedings. On the other hand, competitors may be compelled to pursue invalidity actions earlier and more frequently in order to rebut the presumption of the patent being valid based solely on the fact that it has been registered.

Overall, more emphasis will be put on the competent court in the PI proceedings to assess the validity of the patent with a sufficient degree of certainty. It is likely that the courts will – at least additionally – have to resort to applying the criteria developed for exceptional cases under previous jurisprudence under which survival of first instance proceedings was not required, e.g., relevant objections against the validity of the patent were already taken into account in the granting procedure, the mere absence of validity proceedings as an indication that the patentability of the invention is recognized by experts, obvious irrelevance of arguments raised based on a summary examination, successful parallel proceedings abroad.

As a result, competitors should keep an even closer eye on the market and potential infringers should make sure they are well prepared to present substantive arguments against validity either in a protective writ and/or at an oral hearing.

The CJEU's decision could also impact the urgency prerequisite. With confirmation of the patent at issue in first instance validity proceedings having previously been the minimum requirement for obtaining a PI, the urgency of PI proceedings was not necessarily at stake if the patent holder awaited the decision first. On the contrary, such a decision constituted a substantial change in the facts of the case and triggered a new urgency deadline. The fact that awaiting a decision is no longer strictly necessary could call this principle into question.

It remains to be seen whether the courts will react to the lowered requirements for obtaining a PI by taking a stricter approach regarding the legal consequences. The required adaption of case law may be impacted by the recent reform of the German Patent Act which, inter alia, introduces a codification of an exclusion to injunctive relief based on its proportionality.

III. Conclusion

It remains to be seen how the German courts will accommodate the CJEU's request to change their established case law where necessary. Until then, actors on both sides should exercise caution and make sure they are well prepared to present their arguments for and against the validity of a patent in a substantive manner.

¹ See Annual Report by the German Patent and Trade Mark Office for 2020, available (in German).

² e.g., Deichfuß in GRUR 2022, 33.