The decisive aspect for the BGH was that with the receipt of the application for preliminary injunction the area of mere out-of-court proceedings against third parties has been left behind and a level of dispute has been reached that is tantamount to the filing of legal action and can no longer be categorised as part of an out-of-court dispute (margin number 26).
Moreover, the defence against the infringement may be hopeless or economically unsound and that the party attacked on the basis of the patent cannot be denied the option to choose an appropriate defence strategy that is limited to attacking the legal validity of the patent. According to the BGH, it cannot be justified that the party attacked should have to challenge the patent holder in the main action and thus have to enter into legal proceedings in which the party attacked must accept the patent’s validity to be asserted against said party itself (margin number 27).
This ruling must be welcomed unequivocally. Following recent, fairly pragmatic approaches by the BGH in its “Kurznachrichten” ruling of 16 September 2014 (X ZR 61/13), allowing the preliminary stay of compulsory execution proceedings after a first-instance destruction in line with § 719 sect.1 German Code of Civil Procedure [Zivilprozessordnung, ZPO], this ruling represents another step of the BGH toward rectifying the repercussions of the “Separation Principle” that bestow unfair advantages on a participant. The fact that one-sided, systemic advantages are a thorn in the side of the BGH had been made sufficiently clear by the chairman of the 10th Civil Senate, Prof. Meier-Beck, in his case law review of the year 2014 (GRUR 2015, 721). Along the same lines, in his essay “Bifurkation und Trennung” [“Bifurcation and Separation”] (GRUR 2015, 929) Prof. Meier-Beck discusses a number of considerations aimed at offsetting or mitigating the disadvantages of the Separation Principle. Ultimately, the goal is to is to preserve appeal of national patent litigation ahead of the UPCA.
