In its latest referral to the CJEU, the Munich Regional Court opposes what it considers to be an overly restrictive practice of higher courts in proceedings for interim measures in patent matters. According to this practice, a second examination of the patent (in addition to the granting procedure) must now de facto be carried out as one of the conditions for issuing a preliminary injunction (PI).
To obtain such an injunction, patent owners must credibly demonstrate a patent infringement, an urgent interest in having their patent enforced immediately and that the validity of their patent is sufficiently secure. In addition to the examination of patentability in the granting procedure, several German higher regional courts have now generally required confirmation of patentability, namely, proof that the patent has survived opposition or appeal proceedings before the European Patent Office (EPO) or nullity proceedings before the German Federal Patent Court (BPatG). In a recent proceeding, the Munich Regional Court considers this to be incompatible with the Enforcement Directive 2004/48/EC (decision of 19 January 2021, reference 21 O 16782/20). [1]
In particular, this practice violates Art. 9(1) of the Enforcement Directive, which is intended to ensure that an interim measure can be ordered against a patent infringer to prohibit the continuation of the infringement. However, this could be made impossible, particularly in the case of patents that have only recently been granted, if proof of survived opposition or nullity proceedings were required for this purpose. This is because both opposition and nullity proceedings can only be initiated after the patent has been granted and thus, by their very nature, will not have been completed in the case of newly granted patents. Moreover, many older patents have not been challenged so far and the patent proprietor has no influence at all on whether third parties file oppositions against the grant or choose to file nullity actions. The enforcement of their patents by means of interim measures is thus ultimately not ensured.
[1] Available at https://www.justiz.bayern.de/gerichte-und-behoerden/landgericht/muenchen-1/presse/2021/1.php
