Dr. Michael Schächinger

Salary Partner

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Dr. Michael Schächinger

Salary Partner

Read More

21 janvier 2021

Do preliminary injunctions in patent law, as a general rule, require that the patent in suit has survived adversarial revocation proceedings?

  • In-depth analysis

The Regional Court of Munich disagrees and asks the European Court of Justice to give a ruling.

In a referral by the Regional Court of Munich, the European Court of Justice is asked to decide whether a requirement for granting a preliminary injunction, the secured validity of the patent in suit, as applied by the Higher Regional Courts in Dusseldorf, Karlsruhe and Munich, is in accordance with European law.


If judicial relief in patent infringement cases is urgent, a patentee may apply for a preliminary injunction (PI) against the infringer before German Regional Courts. In proceedings on the merits, a final injunction may be granted within 9 to 16 months, depending on the venue and the individual case at hand. In PI proceedings, a PI may be granted within a few days (ex parte) or up to 3 months (following an oral hearing).

Aside from urgency, meaning that a patentee initiates legal actions without undue delay, German case law in principle requires that the validity of the patent in suit is sufficiently secured. So far, the courts in Dusseldorf and Karlsruhe (first instance: Mannheim) have taken a stricter approach to said validity requirement than the court in Munich. According to long-standing jurisprudence of the Higher Regional Courts of Dusseldorf and Karlsruhe, secured validity can, as a general rule, only be assumed if the patent has survived first instance adversarial revocation proceedings, such as opposition proceedings before the EPO or nullity proceedings before the German Federal Patent Court (see e.g. Higher Regional Court Dusseldorf, judgement of 9 April 2010, I-2 U 126/09 - Harnkatheterset; Higher Regional Court Karlsruhe, judgement of 23 September 2015, 6 U 52/15 - Ausrüstungssatz). Adversarial proceedings are regarded as more reliable than unilateral decisions in examination proceedings, because the involvement of competing parties in the process guarantees that relevant prior art documents are found and explained.

This is not to say that PI proceedings before a first instance decision in revocation proceedings are futile before the Regional Courts of Dusseldorf and Mannheim. On the contrary, several exceptions to this rule are also recognized in the case law. For example, PI proceedings are promising if

  • the defendant cannot present viable challenges to the patent’s validity or does not even initiate proceedings against the patent’s validity,
  • the court can easily assess the patent’s validity without the support of a technical board and has no doubts about its validity,
  • the defendant or a third party already raised relevant objections during prosecution of the patent,
  • the PI is directed against the launch of a generic drug,
  • the PI is directed against a new product presented in Germany only for a few days, e.g. at an international trade show, or if
  • other important reasons, such as a short remaining term of the patent, speak in favour of the patentee.

However, until recently, the Regional Court of Munich was an even better choice of venue for patentees, in particular, if none of the above exceptions applied to the case at hand. This is because the courts in Munich did not agree with the general rule that a patent must have survived adversarial first instance proceedings.

The referral:

This began to change in December 2019, when the Higher Regional Court of Munich abandoned its former jurisprudence and decided to follow the jurisprudence of the Higher Regional Courts of Dusseldorf and Karlsruhe (see e.g. Higher Regional Court Munich, judgement of 12 December 2019, 6 U 4009/19 – Elektrische Anschlussklemme). Now, a year later, the 21st Chamber of the Regional Court of Munich, who was already known to be dissatisfied with the Higher Regional Court’s change of course, decided to refer this question to the European Court of Justice. Apparently, in the case at hand, the newly aligned jurisprudence was for the first time relevant for the outcome of a PI request before the Regional Court of Munich (a requirement for a referral to the European Court of Justice according to Art. 267 TFEU).

While PI proceedings are the only context in which this issue arises, one outcome of the referral is that the underlying PI request, which apparently did not lack urgency, is now on hold until the European Court of Justice provides guidance some years into the future.

Practical implications:

While the legal aspects of the referral are certainly interesting, the practical implications of the aligned jurisprudence may be limited. Although the above mentioned exceptions may be assessed with high scrutiny, they remain untouched in principle. In particular, the jurisprudence regarding generic drug cases, which constitute a major part of PI requests, does not change. What is more, the courts in Dusseldorf, Mannheim and Munich may be the most important and most frequented courts in patent infringement cases, but other courts, for example in Hamburg, are also capable of dealing with complex patent cases and respective PI requests.

You can find an English translation of the press release here. 

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