CJEU must clear up German patent mess on interim injunctions

There is an opportunity for the EU's highest court, the Court of Justice of the EU (CJEU), to make this clear when it comes to rule on questions recently referred to it by the District Court in Munich. Those questions concern the interpretation of EU laws on the enforcement of intellectual property (IP) rights. The judgment will be of particular relevance to the enforcement of patent rights in Germany where disputes concerning the validity of a patent and its alleged infringement are dealt with in separate bifurcated proceedings.

Diverging interpretations of requirements for an interim injunction

To obtain an interim injunction, patent holders must pass two tests:

• They must be able to show that, on the face of things, their patent has been infringed;
• They must be able to show that, on the face of it, it is necessary and justified, on the balance of interests, to enforce their patent through an interim injunction rather than at a later date following a trial.

Across Germany, however, the most prominent patent infringement courts – those being the district and appeal courts of Düsseldorf, Mannheim/Karlsruhe and Munich – have interpreted those requirements in different ways. This divergence is exacerbated by the fact that the Code of Civil Procedure in Germany does not provide for further appeal on the interpretation of interim injunction requirements to the Federal Supreme Court, meaning the approach taken by the different appeal courts across the country is not harmonised.

Balancing interests

In examining the grounds for an interim injunction the court balances the parties' interests: the interest of the patent holder in enforcing their IP right immediately to prevent imminent disadvantages must be weighed against the disadvantages which the opponent will suffer as a consequence of the interim injunction being issued and/or enforced.

A factor swaying the balance of interests away from the issue of an interim injunction is where the validity of the patent allegedly infringed cannot be established with sufficient certainty during the interim injunction proceedings. The summary nature of the proceedings can present a challenge to patent holders in this regard.

The various district courts in Germany have adopted different approaches to assessing whether a patent's validity is sufficiently certain. In Düsseldorf and Mannheim, for example, the courts have required in particular that the relevant patent had already survived a prior validity challenge, while the court in Munich has been less stringent in its requirements. However, at the end of 2019 the Munich Court of Appeals aligned its approach with that of the other main infringement forums in Germany.

The Munich Court of Appeals aligned its view after reversing an earlier decision of the District Court of Munich. In the case, the patent owner applied for an interim injunction just five days after their patent had been granted, citing alleged infringement by the defendant. The application was granted by the district court just 10 days after it had been filed.

The Munich Court of Appeals overturned the interim injunction order, stating that it was not the task of the infringement court, or within its competence, to effectively determine that a patent was valid when this had not yet been tested by issuing an immediately enforceable interim decision.

This current case law in Germany therefore appears to preclude patent holders from relying on the fact that their patents have been granted, and their validity subjected to detailed examination by the granting authority, as evidence of the validity of their patents for the purpose of obtaining an interim injunction.

The ability of patent holders to obtain interim relief is therefore limited to the following exceptional circumstances:

• Where the defendant has previously contributed its own third-party observations in respect of validity during the granting authority's examination phase;
• Where there is general recognition of the validity of the patent in the market – for example, where licenses have already been granted to well-known licensees and/or their is an absence of legal challenge to validity despite infringement litigation;
• Where claims of invalidity raised in parallel opposition proceedings or considered by the interim injunction court have turn out to be unfounded;
• Where there are extraordinary circumstances which mean it is not appropriate to wait for a first-instance ruling on the question of validity or to resort to main proceedings.

The CJEU referral

The District Court of Munich recently had the chance to respond to the Munich Court of Appeals' view. In an order issued on 19 January 2021 it concluded that the appeals court's decision ran contrary to the EU's directive on the enforcement of IP rights.

Article 9 of that directive requires that EU member states "ensure that the judicial authorities may, at the request of the applicant: issue against the alleged infringer an interlocutory injunction intended to prevent any imminent infringement of an intellectual property right".

Where a patent has just been granted it is naturally impossible for it to have already survived a prior validity challenge. Many long-standing patents may also never have been subject to proceedings in which their validity is challenged prior to the case for an interim injunction arising.

Patent owners cannot influence whether their patent is attacked with an opposition or an action for revocation after it has been granted. This means that, even in critical and acute cases of infringement, those patent holders cannot obtain relief until after a full trial has taken place. This could take many months or even years. During this period, according to current case law in Germany, patent owners would have to accept the continuation of the patent infringement would have to be accepted, despite the fact that a detailed technical examination of the patent takes place before it can be granted.

The decision of the District Court of Munich to ask the CJEU to assess the validity requirements adopted by the prominent appeals courts for patent infringement matters in Germany is brave and necessary to restore the balance of interests. A patent becomes legally effective upon grant. Denying its proprietor or an exclusive licensee the right to enforce the patent by means of an interim injunction against any infringer before it has been further tested in a first-instance opposition or revocation proceeding substantially reduces its value. That is not in the interest of a fair and balanced patent system.