In 2016, the Munich I Regional Court issued an interim injunction on the basis of a patent. As always, the defendant in this case, which is recognizably IFA GmbH, issued a final declaration on the temporary injunction without further ado and waived in particular the rights under Section 927 ZPO, i.e. also the right to apply for the revocation of the temporary injunction due to changed circumstances. From the accompanying letters of the lawyers involved it resulted that this waiver should apply “until the expiration of the property right”.
In fact, an objection to the interim injunction would have been appropriate at the time, since the listing in the Lauer-Taxe does not constitute an act of use relevant under patent law (see OLG Düsseldorf, MIT 2006, 428). IFA GmbH does not itself perform any of the acts covered by Sections 9 No. 1-3 PatG. IFA GmbH merely offers a platform on which generic companies offer their products. The mere setting of an adequate cause for actions of third parties within the meaning of § 9 PatG does not trigger an own perpetration. The prerequisite for liability as a disrupter would again be a violation of one’s own examination obligations, the extent of which is determined by whether and to what extent an examination can be reasonably expected under the circumstances of the individual case. IFA GmbH does not, however, have the task of ensuring that medicinal products are placed on the market without the infringement of third-party industrial property rights. Rather, the generics companies are responsible for examining the legal admissibility of their new offering. IFA GmbH is neither equipped nor competent to review registration applications for any infringements of industrial property rights (see BGH, 27.10.2011, I ZR 131/10 – DENIC and LG Frankfurt am Main, Urteil vom 13.09.2019, Az. 3-10 O 78/19).
Some time after the submission of the final declaration, the Federal Patent Court declared the patent at first instance null and void. The patentee appealed against the decision of the Federal Patent Court to the Federal Supreme Court, so that there was no final decision on the legal validity of the patent.
After the first-instance decision of the Federal Patent Court, which was not final and absolute, the respondent in the preliminary injunction proceedings filed an action for revocation of the preliminary injunction. After prior suspension of the enforcement of the action, the Munich I Regional Court granted the application, in particular on the grounds that the final declaration pursuant to Sections 1 and 19 of the ARC was contrary to antitrust law and thus invalid. The respondent was therefore not prevented from requesting the revocation of the interim injunction due to changed circumstances.
The Munich Higher Regional Court overturned the first-instance decision and dismissed the complaint. With the final declaration, the plaintiff for annulment had just waived her right to apply for annulment of the temporary injunction due to changed circumstances. The final declaration had to be interpreted – in particular also because of the accompanying letters of the lawyers involved – to the effect that this waiver applied as long as the patent in dispute had not been declared null and void finally. A different interpretation would place the creditor of an interim injunction in a worse position than that of an identical legally binding title in the main action despite the final declaration. Since the patent at the disposal had not yet been finally destroyed, the plaintiff was prevented from filing an application for revocation because of the final declaration.
The final declaration was not contrary to antitrust law at the time of submission in 2016 and was therefore not invalid. Agreements on property rights are contrary to cartel law – unless they are exempted by law – if they either have the object of restricting competition or if they result in a noticeable restriction of competition. The Munich Higher Regional Court referred to a decision of the Düsseldorf Higher Regional Court (Cartel Senate), published e.g. in NZKart 2015, page 109 et seq. This decision of the Düsseldorf Higher Regional Court had resulted in a delimitation agreement in trademark law. The Düsseldorf Higher Regional Court decided that a (demarcation) agreement in trademark law was antitrust neutral insofar as it merely concretized the existing industrial property rights, because the regulations on market conduct would then not be based on the privately autonomous agreement but on the protective content of the regulated industrial property rights. It was sufficient here that the contracting parties had a serious, objectively justified reason to assume at the time the agreement was concluded that the beneficiary contracting party was entitled to an injunction against the market conduct prohibited by the agreement, so that it was to be seriously expected that the party concerned would have been prohibited from this market conduct by a court. The question as to whether this is the case depends on the legal situation on the day the agreement was concluded (see in particular BGH GRUR 2011, page 641 f. -Jette Joop).
In the present constellation, however, the question arises as to whether, when the final declaration was submitted, IFA GmbH had a serious and objectively justified reason to assume that the injunction claim on the basis of the injunction patent pursuant to the preliminary injunction of the Munich I Regional Court was actually given in the absence of its own infringing act.
In constellations other than IFA GmbH, it is in principle rather rare for a final declaration to be contrary to antitrust law. If a court issues a temporary injunction and thus affirms the existence of an injunction claim, the parties may also have the “serious and objectively justified reason” to assume that an injunction claim based on the property right exists. Something else may apply, however, if, for example, the right to cease and desist was opposed by a plea, in particular the plea of non-use, when the final declaration was made in a trademark matter. Then the injunction claim was not enforceable and even in such cases at least one delimitation agreement in trademark law is contrary to antitrust law and thus invalid.
