If a patentee undertakes actions with respect to a patent of the same patent family (e.g. waiving the parent patent of a divisional patent), this is often negatively characterised as playing the “Divisional Game”. We don’t want to go into the details of this but rather focus on the impact of such actions on a request for a preliminary injunction (“PI”). Two Appeal Courts in Germany have dealt with such a scenario and came to different conclusions. While the Munich Appeal Court generally seems more open to assume an abusive behavior (speaking against the grant of a PI), the Düsseldorf Appeal Court focuses on the timing of such strategic actions.
Assume a parent patent, which survived opposition proceedings before the EPO. Patentee then decides to waive the parent patent during the course of the opposition appeal proceedings. In the meantime, a divisional patent is granted. Said divisional is asserted in PI proceedings against a competitor.
In our case, two PI requests have been filed successively: one before the positive EPO decision regarding the divisional patent (unsuccessful) and one after said EPO decision (successful).
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