25 January 2021 | Dominic Igel Associate, Dr. Christopher Maierhöfer Partner

German patent law is on the move. After the recent referral to the European Court of Justice (CJEU) by the District Court Düsseldorf concerning several open questions on the FRAND requirement in patent disputes involving SEPs at the end of last year, 2021 kicks off with yet another referral to the CJEU. This time, the preliminary injunction (PI) practice in Germany is put to the test.

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 threshold for establishing the validity of the patent in suit is only met if, as a general rule, the patent has already survived a two-sided invalidity proceeding. In other words, a first instance decision confirming the patent’s validity must have been handed down in opposition/appeal proceedings before the European Patent Office (EPO) or in nullity proceedings before the German Federal Patent Court. Although the Courts of Appeal allow some exceptions to this approach, they nevertheless stick to the above-mentioned criterion as a principle.

Referral triggered by the change of legal practice by the Court of Appeals Munich in 2019

The above mentioned standard was first established by the Court of Appeal Düsseldorf and later adopted by the Court of Appeal Karlsruhe. The Munich courts, in contrast, used to follow a more flexible approach regarding the establishment of validity of the patent in suit in PI proceedings. However, this changed at the end of 2019 when the Munich Court of Appeal explicitly adopted the above-mentioned approach of the Courts of Appeal in Düsseldorf and Karlsruhe in its decision dated 12 December 2019 (docket no. 6 U 4009/19).

In the case underlying the recent referral decision, the District Court Munich took the view that there were no reasonable doubts on the validity of the patent in suit, which had just been granted. However, the District Court saw itself – quote - “hindered to issue a PI” in view of the case law adopted by the higher-ranking Court of Appeal Munich. In the reasoning of the referral decision, the District Court argues that under the standards adopted by the Court of Appeals, a patent that has just been granted - as in the case at hand – can generally not serve as a basis for a PI proceedings, since the validity of such “fresh” patent can never be proven by way of a decision in opposition or nullity proceedings, which normally take several years. Moreover, it is not in the patentee’s hands whether and when the patent is challenged at all before the EPO or Federal Patent Court. In the end, this may lead to a situation where many patents would never become suitable for preliminary relief against infringement, leading to a considerable gap of protection. On that basis, the District Court Munich comes to the conclusion that the established case-law is not in compliance with Art. 9 par. 1 of the Directive 2004/48/EU, which  provides that national courts of the member states must have the possibility to apply preliminary injunctive relief based on the alleged infringement of an IP right.

Reset to zero by the CJEU?

The referral to the CJEU does not come as a complete surprise. In the past, a number of court decisions as well as practitioners have criticized the quite restrictive approach adopted  by the most important Courts of Appeal in Düsseldorf, Karlsruhe and recently also Munich.

To assess the impact of the referral and the decision to be expected from the CJEU for the German PI practice, it is crucial to look at the actual referral question formulated by the Munich District Court. It asks the CJEU whether the established practice of the Court of Appeals “to generally deny a PI request in case the patent in suit has not yet survived a first instance opposition or nullity proceedings” is in line with Art. 9 par. 1 of Directive 2004/48/EU.

Insofar, the referral seems to be solely focussed on the question whether the general rule/exception relationship applied by the Courts of Appeals is compatible with the Enforcement Directive. Remarkably, the District Court does not ask the CJEU to provide further guidance about the appropriate standard for establishing validity of the patent in suit in case the current practice by the Courts of Appeals is held to be inadmissible. Should the standard rather be that the court is generally bound to the grant decision of the Patent Office unless there are indications that the patent may be invalid? And what does this generally mean for the onus of proof for establishing (or – in case of the defendant – for disproving) the validity of the patent in PI proceedings? 

As the question referred by the Munich District Court arguably remains quite open, it will ultimately depend on the CJEU to what extent its decision will contribute to shape the future of patent PI proceedings in the EU and Germany in particular. 

About the Authors

dominic igel module

Dominic Igel
As a member of our German Intellectual Property Group, I specialise in national and international patent infringement and (co-)ownership disputes and advise our clients in all areas of IP protection as well as copyright law, having extensive experience in the law of collecting societies. My practice also covers the protection of know-how and trade secrets, where I advise not only on judicial enforcement, but also on the contractual and strategic safeguarding of entrepreneurial know-how. I also provide IP-related advice within corporate transactions and IP-focused contractual consulting.

Direct: +49 (0)89 3581 6000

[email protected]
christopher maierhoefer module

Dr. Christopher Maierhöfer
As partner and member of our Intellectual Property Practice Group, I advise an international range of clients, with a special focus on life sciences and telecommunications technology. Since joining our firm in 2011, I have constantly broadened my practice from patent litigation, which still makes up the major part of my work, to protection and enforcement of trade secrets and know-how and contractual IP work.

Direct: +49 (0)89 3581 6000

[email protected]

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