Yesterday, Thursday 28 April 2022, the CJEU delivered its decision in the preliminary ruling case C-44/21 and held that the case law of the German Higher Regional Courts in proceedings for interim relief in patent matters, according to which the grant of interim measures for infringement of a patent is in principle to be refused if the patent has not yet survived opposition or revocation proceedings at first instance confirming its validity, is not compatible with Art. 9(1) of Directive 2004/48/EC (Enforcement Directive).
In our article of 25 January 2021, we reported that the Munich Regional Court had turned to the CJEU with a corresponding request for a preliminary ruling.1 In the underlying preliminary injunction proceedings, the court had come to the conclusion that the applicant’s patent was legally valid and infringed but saw itself prevented from issuing a preliminary injunction due to the above-mentioned binding case law of the Munich Higher Regional Court.
In its judgment, the CJEU emphasizes that
- granted patents are, in principle, presumed to be valid and enjoy, from the date of publication of the grant, the full protection afforded, inter alia, by Directive 2004/48;
- the Member States must ensure that, under Article 9(1), national courts have the power to order provisional measures and, after examining the particular circumstances of the case, to grant them;
- Directive 2004/48 lays down a minimum standard and the remedies prescribed therein are intended to prevent, remedy, or put an end to any infringement of an existing intellectual property right.
The Court states, with reference to the German case-law leading to the reference:
“It must be stated that such case-law imposes a requirement which deprives Article 9(1)(a) of Directive 2004/48 of any practical effect in so far as it does not allow the national court to adopt, in accordance with that provision, an interlocutory injunction in order to terminate immediately the infringement of the patent in question even though that patent, according to the national court, is valid and is being infringed.” [para 34]
“A national procedure aimed at the immediate termination of any infringement of an existing intellectual property right would be ineffective and, consequently, would disregard the objective of a high level of protection of intellectual property, if the application of that procedure were subject to a requirement such as that laid down by the national case-law referred to in paragraph 33 of the present judgment.” [para. 40]
Further, both Directive 2004/48 and the Member States bound by it provided sufficient safeguards to prevent provisional measures and proceedings from being misused.
Accordingly, the German courts of first instance are now required, if necessary, to disregard the previous case law of the higher regional courts that is incompatible with Article 9(1) of the Enforcement Directive. The CJEU judgment contains an unambiguous instruction in this respect (para. 53) and a clear request to change established case law that is contrary to Union law (para. 52).
This highly anticipated ruling is likely to have a significant impact on future practice in preliminary injunction proceedings. It is true that courts have already developed and implemented extensive exceptions to the above-mentioned principle. However, the mere argument that a patent for an injunction has not yet survived proceedings on the validity of the patent in the first instance should no longer lead to the rejection of a request for interim injunction. Rather, and more than ever, it will be up to the alleged infringer to make the doubtful validity of the patent credible and, on this basis, the courts will subject the respective patent to a thorough summary examination. It will be a challenge for all concerned to manage this with the speed that is customary for preliminary injunction proceedings in Germany.
(In the same decision, the CJEU also reiterates its views on the requirements for the implementation of the expedited procedure under Article 105 of the Rules of Procedure (see also Case C-590/20 of 3 March 2022, with further references). The Munich Regional Court had requested that the case be dealt with on an expedited basis, as the nature of the case required a speedy decision. The Court confirmed its previous case-law according to which the mere – albeit legitimate – interest of the applicant in having her rights clarified as quickly as possible in the context of preliminary injunction proceedings was not suitable to prove the existence of the exceptional circumstances required for Article 105. A reference for a preliminary ruling in the context of domestic interlocutory proceedings is not in itself capable of establishing that the nature of the case requires its speedy disposal. The request was dismissed.)
1 For the request for preliminary ruling of 19 January 2021 and discussion status:
GRUR 2021, 466 – Validity of a patent in preliminary injunction proceedings (with comment by Kühnen, presiding judge at the Dusseldorf Higher Regional Court)
GRUR 2021, 557 – The significance of the grant of the patent for the prognosis of its validity in preliminary injunction proceedings (reply by Pichlmaier, judge at Munich Regional Court)