ECJ referral question of the Munich District Court I on preliminary injunction proceedings – Will the standard for preliminary injunctions in patent law now change?

In a reference for a preliminary ruling pursuant to Art. 267 TFEU, the Regional Court of Munich I (Landgericht München I), in a decision of 19 January 2021, had referred the question to the ECJ as to whether preliminary injunctions in patent law may always require that proceedings on the validity of the patent have been concluded. The ECJ has now ruled that this is incompatible with EU law. As a result, the validity of the patent in suit will probably also have to be discussed more intensively in injunction proceedings. It could also now become questionable whether a decision in validity proceedings would create new urgency. In detail:

1. Background

The Regional Court of Munich I had referred the following question to the ECJ: “Is it compatible with Union law for higher regional courts to generally refuse to issue interim measures for the infringement of patents if the patent in dispute has not yet gone through opposition or nullity proceedings in the first instance and has been confirmed therein?”. The background to this question for reference was the reaction to the changed case law of the Munich Higher Regional Court on the requirement of a secured validity of patents in preliminary injunction proceedings. When issuing a preliminary injunction in a patent infringement case, it is generally necessary that, in addition to the actual injunction claim (injunction patent infringement), there is also a reason for the injunction, which then includes not only urgency, but also the substantiation of a sufficiently secured validity of the injunction patent. According to the previous decision practice of the Higher Regional Courts, it is not sufficient for the issuance of a preliminary injunction in patent infringement proceedings that the asserted patent was granted by the granting authority after detailed examination. Beyond this circumstance, the Higher Regional Courts, particularly in Düsseldorf and Munich, generally additionally require that the patent granted has been examined for patentability a second time in opposition or nullity proceedings in the first instance before issuing a preliminary injunction due to its infringement. However, there are numerous exceptions to this principle. For example, according to case law, it may be sufficient in individual cases if a patent is recognized by well-known competitors (e.g. by taking licenses), or if the defendant only submits unsuitable prior art. However, neither the referring chamber of the Regional Court dealt with these and other exceptions, nor did the ECJ address them. The decision is therefore solely focused on the case where none of the numerous groups of exceptions are present and no other arguments are available.

2. Grounds of Decision

Specifically, the ECJ deals with the question whether Art. 9 (1) of Directive 2004 / 48 (“Enforcement Directive”) is to be interpreted as precluding a national case law according to which the grant of provisional measures for the infringement of patents is in principle refused if the patent in suit has not survived at least first instance opposition or nullity proceedings. The ECJ first states that according to Art. 9(1)(a) of Directive 2004 / 48, Member States should ensure that the competent courts have the possibility to order a provisional measure against the alleged infringer at the request of the applicant in order to prevent an imminent infringement of an intellectual property right. According to Art. 9(1)(a) in conjunction with recitals 17 and 22 of the Directive, the Member States would have to provide in their national law the possibility for the competent national courts to order a provisional measure after an examination of the particular circumstances of the individual case and in compliance with the conditions provided for in Art. 9. Furthermore, according to Art. 9(1)(a) of the Directive in question in conjunction with Recital 22, the provisional measures provided for in national law should enable the immediate cessation of the infringement of an intellectual property right without having to wait for a decision on the merits. Those measures are justified in particular where any delay would demonstrably cause irreparable harm to the holder of such a right. Thus, the time factor is of particular importance for the effective enforcement of intellectual property rights.

The above case-law and decision-making practice would, however, establish a requirement that would deprive Article 9(1)(a) of Directive 2004/48 of any practical effectiveness, since national law would be precluded from ordering, in accordance with that provision, an interim measure to put an immediate end to the infringement of the patent in suit, which it considers to be valid and infringed. Such a requirement could also result in potentially infringing competitors of the proprietor of the patent at issue deliberately refraining from attacking its validity in order to prevent the patent from benefiting from effective judicial protection, with the result that the mechanism of interim relief provided for in Article 9(1) of Directive 2004 / 48 was deprived of its substance. Furthermore, the objectives pursued by Directive 2004 / 48 would confirm that a national jurisdiction of this kind would not be in conformity with it. This is also argumentatively supported by the tenth recital of the Directive, which would indicate that it is intended to approximate the laws of the Member States in order to ensure a high, equivalent and homogeneous level of protection of intellectual property in the internal market. A domestic procedure designed to bring to an immediate end any infringement of an existing intellectual property right would be ineffective and thus fail to achieve the objective of a high level of protection of intellectual property if its application were subject to a requirement such as that described in the question referred for a preliminary ruling.

Furthermore, the ECJ states that patents carry a presumption of validity from the time of publication. Thus, they would also enjoy protection fully encompassing Directive 2004 / 48 as of that date. With regard to the risk that the defendant would suffer damage in the proceedings for interim relief by the granting of provisional measures, it must be noted that according to Art. 3(2) of Directive 2004 / 48, the measures, procedures and remedies necessary for the enforcement of intellectual property rights must be applied in such a way as to avoid the creation of barriers to legitimate trade and thus provide a guarantee against their abuse. Consequently, the Union legislature has already provided legal instruments which make it possible to reduce dangers of this kind altogether and to protect the defendant accordingly. It is further argued that the principle of interpreting national law in conformity with the Union would be subject to certain limits. Thus, there would be an obligation on the national judge to refer to Union law when interpreting and applying the relevant provisions of domestic law. In the present case, the German legislation at issue would not contain any provisions according to which the issuance of an interim measure to prohibit a patent infringement would require a court decision in a state of the law proceeding, so that these provisions would be entirely in line with the directive in question.

3. Conclusion

The ECJ has ruled on the isolated question of referral: Successfully surviving validity proceeding is thus no longer required as a rule. What are the implications for practice? It can be assumed that the burden of proof regarding the validity of patents will shift back to Defendant, the actual or alleged infringer. Defendant would therefore be advised to prepare himself even more than before with appropriate prior art searches in order to be able to present a strong legal attack at the latest in the case of an application for a preliminary injunction.

According to previous case law, a decision on the validity of a patent has often opened a new urgency, since without this decision a request for a preliminary injunction usually did not have a high chance of success. Whether this possibility of a new urgency still exists is likely to depend on the individual case on the possible attacks against the patent. Particularly in the case of an already ongoing legal action, there may still be a lot to be said for waiting for its outcome.

It is regrettable, however, that the very extensive and balanced case law of the German courts, which precisely allows a deviation from the principle of the necessity of a decision on the validity of a patent, was not considered and not included in the decision.

Christopher Weber

Hüveyda Asenger

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