The ECJ gave the following answer to the question referred by the Munich Regional Court I:
Art. 9 (1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as precluding national case-law under which the grant of provisional measures for infringement of patents is in principle refused if the patent at issue has not survived at least opposition or revocation proceedings at first instance.
The question referred by the Munich Regional Court I has been commented on many times and has also been viewed critically. A summary of the problems and criticism arising from the question referred can be found here.
“In principle”
To summarise briefly: the decisive significance of both the question referred for a preliminary ruling and the ECJ’s answer lies in the unresolved ambivalence of the term “in principle”.
The ambivalence lies in the fact that this term can take on very different meanings. “In principle” can mean that it is a rule from which there are exceptions or to which there are alternatives. But “in principle” can also mean that the rule is a necessary condition that must occur.
This ambivalence and vagueness of the term “in principle” is at the heart of the discussion and debate that has taken place. According to the undisputed case law of the Higher Regional Courts of Düsseldorf, Karlsruhe and also Munich, the granting of a preliminary injunction in patent litigation can only be considered if both the question of patent infringement and the existence of the patent can be answered so clearly in favour of the applicant that an erroneous decision cannot seriously be expected.
The discussion therefore revolves solely around the question of which standard is applied to this required prognosis decision of certainty of the legal status. The aforementioned Higher Regional Courts have argued that a surviving legal existence procedure is sufficient to be able to assume this certainty.
However, there are alternative groups of cases in which such certainty can also be assumed. This was affirmed, for example
– if the defendant had already participated in the grant proceedings with objections,
– if the patent was generally considered to be protectable,
– if the objections to the validity of the patent proved to be groundless on summary examination, or
– if waiting appears unreasonable for the patent proprietor due to exceptional circumstances (for example, in the case of generic drugs).
The case law of the Higher Regional Courts thus assumed that the term “in principle” only describes a rule for the affirmation of one of several prerequisites of the facts and that there are also alternatives that allow the issuance of an interim injunction in individual cases. The most important one is probably that the objections to the existence of the law prove to be groundless upon summary examination.
Content of the ECJ decision
The now decisive question is therefore what answer to the question referred was actually given by the ECJ at all in the context of this case law.
The ECJ states in the last paragraph before the decision formula that the Enforcement Directive
“precludes a national case-law according to which the grant of provisional measures for infringement of patents is in principle refused if the patent in question has not survived at least opposition or revocation proceedings at first instance.”
Here, too, the ambivalent word “in principle” (English version: in principle, French: en principe) appears again when it is pointed out that the granting of an interim injunction may not be “refused in principle”.
However, the ECJ’s paraphrase of the question referred for a preliminary ruling in paragraph 26 is perhaps illuminating for the understanding of this sentence, where it states:
According to this case law, the grant of provisional measures also requires the existence of a decision in opposition/appeal proceedings before the EPO or the Federal Patent Court (Germany) in nullity proceedings confirming that the patent in question affords protection for the product in question.
The ECJ thus evidently assumed that a decision in substantive proceedings was the prerequisite for a preliminary injunction. Accordingly, the decision in the proceedings on the existence of rights was the condition for the merits of the injunction proceedings².
However, there has never been such a case law in Germany. Conversely, the Munich Regional Court I could have affirmed the issuance of a preliminary injunction, because after the reproduction of the question referred in the ECJ’s decision, the Munich Regional Court I was already convinced that the patent in question was legally valid. So reports the ECJ in marginal no. 24:
The referring court states that it has reached the preliminary conclusion that the patent in question is valid and infringed. The existence of the patent was not endangered.
Obviously, the Munich Regional Court and the ECJ were talking at cross purposes here. The ECJ was obviously of the opinion that the completed validity proceedings were a conditio sine qua non for the issuance of a preliminary injunction. In contrast, according to the Munich’s Higher Regional Court “Elektrische Anschlussklemme” case law, the preliminary injunction could have been granted even without legal status proceedings if the Regional Court was so certain about the legal status.
Consequences of the ECJ decision
The question that now needs to be answered further is therefore how the ECJ decision will be dealt with.
In fact, it says that according to the Enforcement Directive, a completed state of the law procedure may not be a conditio sine qua non for injunction proceedings. However, this has never been the content of the case law.
On the other hand, the decision says nothing about how the patent litigation courts are to obtain sufficient certainty in their prognosis decision on the validity of the patent for revocation.
It would be a misunderstanding to conclude from the ECJ’s decision that proceedings on the validity of the patent could or should “in principle” no longer be required and that a lower degree of certainty about the validity of the patent for revocation must therefore be sufficient for a preliminary injunction. For, viewed in the light of day, the ECJ said nothing about this.
It is therefore undisputed that the patent courts will continue to be faced with the task of examining the legal status of the patent in the injunction proceedings in such a way that an erroneous decision is not seriously to be expected.
The ECJ’s decision has not materially changed this premise. It is quite likely that the higher regional courts will also maintain this view, so that in the end only the old football wisdom remains:
After the match is before the match.
¹Munich Higher Regional Court, GRUR 2020, 385 – Elektrische Anschlussklemme
²English version marginal no. 26: … the patent concerned must also be the subject of an EPO decision in opposition or appeal proceedings, …
²French version marginal no. 26: … le brevet concerné devrait en outre faire l’objet d’une décision de l’OEB dans le cadre d’une procédure d’opposition …
