Patent law: German PI practice put to the test in Luxembourg

District Court Munich seeks clarity over necessary threshold for establishing the validity of the patent in suit in German PI proceedings

The referral by the District Court Munich, issued on 19 January 2021 (docket no. 21 O 16782/20), addresses the issue of what standard should be applied for the necessary establishment of validity of the patent in suit in PI proceedings. In remarkably explicit statements, the District Court Munich questions the current practice by its own Court of Appeal to allow a PI for patent infringement only based on a patent which has survived a two-sided invalidity proceeding, and considers it to be incompatible with Art. 9 para. 1 of the Directive 2004/48/EU on the Enforcement of Intellectual Property Rights (Enforcement Directive).

Established case law of the Courts of Appeal challenged

In Germany, motions for preliminary injunctions in patent cases are decided on by the District Court (Landgericht) level in first instance. These decisions can be appealed in a second instance by the respective Court of Appeal (Oberlandesgericht). However, there is no further appeal to the German Federal Supreme Court (BGH) that could lead to a unified standard of jurisdiction. 

Over the years, however, jurisdiction of the most relevant Courts of Appeal for patent disputes in Germany (Düsseldorf/Karlsruhe/Munich) has become quite consistent regarding the requirements for issuing a PI based on patent infringement. As a general rule, a PI based on patent infringement is only to be issued if both the infringement and the validity of the patent in suit are established so clearly that an erroneous preliminary decision, which would have to be revised in main proceedings on the merits, is not reasonably to be expected. 

According to the case law of the leading Courts of Appeal, the…