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Are the high requirements for preliminary injunctions against patent infringers justified?

Date: 24 March 2021

In Germany, patent infringement proceedings and nullity proceedings are generally conducted independently of one another. This is referred to as ‘bifurcation of proceedings’ (“Trennungsprinzip”): infringement proceedings are heard before the regional courts and in the second instance before the higher regional courts (“Landgerichte”), nullity proceedings before the Federal Patent Court (“Bundespatentgericht”) and in the second instance before the Federal Court of Justice (“Bundesgerichtshof”).


Due to the length of these proceedings, which can last for 3 to 5 years, taking normal legal action against patent infringers is a test of patience for patent holders.


Preliminary injunctions offer a remedy, which make it possible to assert preliminary injunctive relief claims against an infringer within a very short time (a few days to weeks). As a rule, these are checked in the subsequent main proceedings and are therefore initially considered provisional but they offer a quick opportunity to prohibit third parties from further infringing a patent.


Most patent infringement courts in Germany require, in addition to the justification of the asserted rights based on the asserted patent, that the patent must have withstood revocation (nullity) or opposition proceedings in the asserted scope of protection in order to issue an injunction. In other words, although the patent is granted and has already undergone examination before the DPMA or the EPO, the patent owner must first prove the legal validity of the patent in a further official (opposition) or a judicial (nullity action) procedure before an infringement court. Most courts do not consider the grant procedure to be sufficient evidence of legal validity. This process does not save time for the patent holder, as opposition and / or nullity proceedings would first have to be overcome.


The District Court of Munich I found this situation unsatisfactory. It therefore submitted the following question to the ECJ (European Court of Justice) for decision (keyword “Steckverbinder” (“connector”); file number 21 O 16782/20):


"Is it compatible with Article 9 (1) of Directive 2004/48 / EC that in proceedings for interim legal protection the higher regional courts with jurisdiction of the last instance generally refuse to issue interim measures based on the infringement of patents if the patent in suit has not survived first-instance opposition or nullity proceedings?"


In order to take action against product piracy (i.e., against imitators who implement a technical teaching and use and / or market patented products or processes without the patent holder's permission), the so-called "Enforcement Directive" 2004/48 / EC provides that for the protection of Intellectual Property, including uses falling under the protection of patents, inventors should be able to make a legitimate profit from their inventions (recital (2)). In recital (22) it says:


"Furthermore, interim measures are indispensable, while maintaining the right to be heard and the proportionality of the interim measure with a view to the special circumstances of the individual case, and subject to the securities that are required to protect the respondent in the event of an unjustified request, to reimburse the damage incurred and any expenses that enable the violation to be ended immediately without having to wait for a decision on the merits. These measures are particularly justified where any delay can be shown to cause irreparable damage to the owner of an intellectual property right."


Art. 9 of the directive requires that the competent courts, at the request of the infringed party, be able to order an interim measure (a preliminary injunction) against the alleged infringer. In Germany this is codified via § 58 Patent Act (PatG): “with the publication [of the granted patent] in the patent gazette) the legal effects of the patent come into effect"; this corresponds to Art. 64(1) of the European Patent Convention), § 139 Patent Act (Right to claim against an infringer) and §§ 935 and 940 of the Code of Civil Procedure (threatening disadvantages for rightholders).


The LG Munich I does not see any basis in the relevant German legal material for the requirement of a prior decision in nullity or opposition proceedings. According to Article 9 (1) of the Enforcement Directive:


“it should be ensured that an interim measure can be ordered against a patent infringer in order to prohibit the continuation of a patent infringement. However, according to the case law submitted for review with this order for reference, this is not possible. This is because a patent that has just been granted - as in the present case - cannot have passed legal validity proceedings (opposition or nullity proceedings are only possible after the patent has been granted). Many patents, which were granted a long time ago, often did not pass through legal validity proceedings at the time of the request of an interim measure. Naturally, the patent owner has no influence whatsoever on whether his patent is attacked with an objection or an action for annulment after it has been granted. Strictly, an interim measure can only be issued, even in case of an acute infringement, if legal validity proceedings (initiated by a third party) have been concluded in the first instance, which can take many months or even years. The continuation of the patent infringement must be accepted during this period according to the case law that has been examined, although a patent - unlike other intellectual property rights - is subject to a detailed technical examination by law before it can be granted and asserted in legal transactions."


There have been certain exceptions in previous case law from the lower courts. This includes, for example, cases when the alleged infringer was already practically involved during the granting process by means of filing Third Party Objections; where a protection right forming the basis for the request was generally regarded as eligible for protection and had also been granted in other countries; where objections to the legal validity of a right of disposal have already been proven to be unfounded by a summary examination; or where, due to extraordinary circumstances, such as use at a trade fair by a foreign company, it was unreasonable for the applicant to wait for the outcome of an objection or nullity proceeding.


However, these exceptions did not apply in the present case (it concerns EP 2 832 536) because they would be applied very restrictively.


Overall, the court felt compelled, because it could not issue an interim injunction in spite of its own conviction, to put the question referred to the ECJ.


The ECJ will presumably also review the situation in other EU member states (e.g. France and the Netherlands).


We are curious to see whether the ECJ will decide in favor of the enforcement of patents by means of injunctions.


It should also be noted that GATT / Trips in Art. 44 (not mentioned in the order for reference, since the other legal bases prevail) expressly provides for interim proceedings.


We can advise and support you when it comes to the legal validity of your own patents and their enforcement - including requests for interim injunctions.


We can also support you if you have reason to fear infringing third party patents or need to protect yourself against competitors by filing protective letters.


If you have questions on the topics raised, please contact us: Contact Us