Germany: CJEU referral on current practice in PI proceedings

Is it compatible with Article 9 (1) of Directive 2004/48/EC that in proceedings for provisional measures the Higher Regional Courts with jurisdiction of the last instance generally refuse to issue provisional measures due to the infringement of patents if the patent in suit has not survived first instance opposition or nullity proceedings?

The background to this is the current practice of the Higher Regional Courts of Düsseldorf, Mannheim and Munich: A sufficiently secured validity of the patent that is inter alia prerequisite for the finding of a ground for a preliminary injunction (that again is besides the claim for an injunction required for the granting of a preliminary injunction) could only be assumed – with a few exceptions – in case the patentability was not only confirmed in the examination in the prosecution proceedings, but in addition in principle the patent must have “survived” controversial first instance validity proceedings meaning opposition proceedings before the European Patent Office (EPO) or nullity proceedings before the Federal Patent Court.

The Munich Regional Court questions whether this practice is in line with Article 9 par. 1 of the Enforcement Directive, which provides for effective provisional measures against patent infringements. The Court points out that in cases as the one underlying the referral in which the patent has only just been granted (in December 2020), it is impossible for a patent to have passed validity proceedings and that the patent owner does not have any influence on whether the validity of the patent is attacked in formal proceedings. The current practice could have the effect that despite an acute infringement, a preliminary injunction would not be issued because validity proceedings (which can take many months or even years) have not been concluded. As a consequence, the continued infringement would have to be accepted, even though the patent – unlike other intellectual property rights – underwent a detailed technical examination before it has been granted.

This referral will lead to another decision of the CJEU in the context of preliminary proceedings in patent matters. In the Bayer/Richter Case C-688/17, the CJEU interpreted Article 9 par. 7 of the Enforcement Directive concluding that when a patent is subsequently revoked, it does not automatically follow that a preliminary injunction based on that patent was unfounded.