By order of 19 January 2021, the Munich I Regional Court referred the question to the Court of Justice of the European Union as to what requirements must be placed on the validity of the patent of an injunction patent in order to justify the issuance of a preliminary injunction. The order for preliminary ruling has attracted attention in practice (cf. the criticism by Kühnen in GRUR 2021, 466, 468 et seq.) and deserves a closer look.
1.
The Munich I Regional Court refers the following question for a preliminary ruling: Is it compatible with Article 9 (1) of Directive 2004/48/EC (“Enforcement Directive”; the author) for higher regional courts having jurisdiction at last instance in proceedings for interim relief to refuse in principle to grant interim measures for infringement of patents if the patent in dispute has not survived opposition or invalidity proceedings at first instance?
The submission is a reaction to the recently changed case law of the Munich Higher Regional Court on the requirement of the secured validity of patents in preliminary injunction proceedings (OLG München, GRUR 2020, 385 – Elektrische Anschlussklemme). It has already been described as courageous (Rastemborski, GRUR-Prax 2021, 109); in any case, it is sensational. Whether it is legitimate to ask the ECJ about the compatibility of the requirements placed by the higher courts on the existence of the law with the Enforcement Directive (according to Kühnen, loc. cit., p. 468; cf. on the submission of the court of instance “with a legal-political flavour” as a means of influencing higher court case law: Latzel/Streinz, NJOZ 2013, 97, 98) can remain open. The submission of the Munich Regional Court I seems to lack justification. It is unlikely to serve the interests of the parties to the proceedings in view of the procedural delay associated with the referral to the ECJ. It does not seem to help the interests of the general public or at least of practitioners working in patent law, if only because it reproduces the legal practice of the German higher courts in an abbreviated form and therefore pressures the ECJ to answer a question that is unlikely to arise in practice in this way. Nevertheless, it is not entirely unjustified.
According to Kühnen, the submission refers to the criticised case law in a factually incorrect and incomplete manner and does not prepare it with its economic background and intentions (Kühnen, loc. cit., p. 468; similarly, albeit less sharply Rastemborski, GRUR-Prax 2021, 109). Without this, the ECJ lacks the basic prerequisites for answering the question referred for a ruling that is conducive to clarifying the law. The criticism expressed is not plucked out of thin air.
2.
It is astonishing that the Munich I Regional Court, as a court of first instance in proceedings for interim relief, resorts to preliminary ruling proceedings at all. In proceedings for interim relief, there is in principle no obligation to submission (BVerfG, EuR 2006, 814 et seq.; BVerfG, NVwZ 1992, 360). However, it can also be submitted in proceedings for interim relief (see Wegener, in: Calliess/Ruffert, EUV/AEUV, 5th ed. [2016], Art. 267 TFEU marginal no. 23; Ehricke, in: Streinz, EUV/AEUV, 3rd ed. [2018], Art. 267 TFEU marginal no. 39). Although the provisional nature of the decisions to be made in interim relief proceedings does not legally preclude a referral, this is regularly ruled out in practice due to the urgency (cf. Wegener, loc. cit., marginal no. 23; Ehricke, loc. cit., marginal no. 39). A submission in summary proceedings is therefore not precluded per se, especially if it serves to clarify procedural questions that (can) only concern the summary proceedings before the court.
However, such a procedure can only be explained by a considerable pressure of suffering on the part of the referring court. On the one hand, this pressure of suffering may be fed by the desire to end a decision-making practice that is perceived as unjustified. On the other hand, the driving force seems to be a lack of confidence in one’s own higher court, at least with regard to the legal positions under assessment. The reasoning of the order for reference leaves little doubt about both.
A judiciary that is critical of its own higher court is no reason to complain – quite the contrary. The impulses coming from the lower court, especially from the dispute over the substance of the case, are indispensable for the further development of the law, are far too rare in practice and, wrongly, are not always particularly sought after in parts of the judiciary. It can therefore certainly be seen as positive that the Munich I Regional Court is passionate about its legal opinion, which differs from that of the Munich Higher Regional Court. Whatever the motivation may be: when formulating the submission to the ECJ, it should not have overshadowed the factually accurate and complete preparation of the legal situation and the economic background and intentions urged by Kühnen.
3.
The wording of the question referred for a preliminary ruling already appears problematic. According to Art. 267 TFEU, the ECJ decides in preliminary rulings, inter alia, on the interpretation of the (European) Treaties. This also includes questions of interpretation of the Enforcement Directive. The compatibility of a provision of national law or a national court practice with European law cannot be the subject of the proceedings (cf. also Latzel/Streinz, loc. cit., p. 102). Therefore, the question for a preliminary ruling formulated by the Munich I Regional Court as to whether the practice (described in more detail) of higher regional courts of final instance is compatible with Article 9(1) of the Enforcement Directive is, strictly speaking, not admissible under Article 267 TFEU.
It is true that the requirement of conformity of national law with Union law is not limited to legislation, but also requires national courts to interpret and apply national law in conformity with Union law. Nevertheless, national case law cannot be the subject of the preliminary ruling procedure, including the case law “put up for review” by the Munich I Regional Court.
Formally, it would not have been objectionable to ask whether Article 9(1) of the Enforcement Directive is to be interpreted in such a way that it precludes a national provision – such as the one applicable in the initial proceeding – according to which the grant of an injunction based on a patent generally requires that the patent has survived opposition or invalidity proceedings at first instance. In terms of content, this wording would probably also not be acceptable, as it does not include the exceptions to the cited principle developed in German case law and therefore either cannot be relevant to the decision or the wording “in principle” (insofar as it is intended to refer to the exceptions) constitutes a reference that is generally inadmissible in a question referred for a preliminary ruling.
4.
Such a formulation of the question referred would presumably have made it clear that the question referred was incomplete and should not arise in the initial proceeding for that reason alone.
German law does not provide for a rule according to which the grant of an interim injunction based on a patent requires that the patent has survived opposition or invalidity proceedings in the first instance. Rather, this principle is subject to the exceptions formulated by the case law. The wording of the question referred for a preliminary ruling without including the exceptions that form the principle in the first place is therefore unfortunate (Kühnen, who considers the approach to be scientifically dishonest, op. cit., p. 468). If the ECJ answers such a question, nothing is likely to be gained for German legal practice, because the answer refers to a case-law practice that does not exist anyway.
5.
Munich I Regional Court correctly points out that the German legal materials do not contain any reference to the requirement of a first-instance decision in proceedings on the existence of a right and that the German law is therefore fully in line with the Enforcement Directive.
Against this background, a wording of the question referred for a preliminary ruling that is oriented towards the interpretation of Article 9 of the Enforcement Directive would have been all the more appropriate.
6.
The admissibility of the submission is contradicted by the fact that the Munich I Regional Court, according to its own statements, has no doubts about the interpretation of Article 9 (1) of the Enforcement Directive (on the requirement of doubt about interpretation Latzel/Streinz, loc.cit., p. 105). Rather, the Munich I Regional Court assumes as certain that the possibility of interim measures required by the provision is not ensured in national law if these are refused on the grounds that no first instance opposition or invalidity proceedings have taken place so far.
7.
Moreover, the question referred is not relevant to the decision. A referral pursuant to Article 267 TFEU presupposes that the referring court considers a decision on the question referred to it to be necessary in order to give its own judgment, Article 267 (2) TFEU. As a rule, the Court of Justice does not examine this requirement. Rather, the referral itself establishes the presumption that the question in question is necessary from the perspective of the referring court (ECJ, NVwZ 2012, 1162, para. 17 f. – Garkalns). In individual cases, however, a rejection of question referred for lack of relevance to the decision is quite conceivable (cf. Latzel/Streinz, loc. cit., p. 105 re. sp. as well as fn. 174).
The order for reference lacks a description of the relevance for the decision, as the Munich I Regional Court does not explain how different answers to the question reffered would affect the decision on the merits. In particular, it is not clear from the order for reference what decision the Munich I Regional Court would take in the event that the ECJ does not consider the practice of the higher court to be contrary to European law.
As a relevant aspect for the relevance of the decision, the Munich I Regional Court states that due to the decision-making practice of the Higher Regional Court of Munich, it currently sees itself forced to refuse to order interim measures in the present case, contrary to its understanding of the provision in Article 9 (1) of the Enforcement Directive. This does not constitute a comprehensible justification of the relevance of the decision, because the Munich I Regional Court is not bound by the practice of the Munich Higher Regional Court in its decision-making.
The Munich I Regional Court would have maintained the appearance of relevance to the decision if it had agreed with the position of the Munich Higher Regional Court on the basis of §§ 935, 940 ZPO, but had seen in this an incompatibility with Article 9 (1) of the Enforcement Directive and had therefore asked the ECJ to answer the question referred. This may only be a technical trifle. It is nevertheless noteworthy, as the deviating approach chosen by the Munich I Regional Court implies a clear criticism of the Munich Higher Regional Court.
8.
In the matter itself, the Munich I Regional Court is subject to a misinterpretation of Art. 9 of the Enforcement Directive, which Kühnen rightly points out with reference to recital 22 of the Enforcement Directive (Kühnen, loc. cit., p. 469). The provision does not force the member state court to order provisional measures in every case of infringement of a patent. Rather, Art. 9 (1) of the Enforcement Directive merely provides that the member states grant the competent courts the possibility to do so. This possibility is unquestionably available to the courts under §§ 935, 940 ZPO.
Furthermore, Art. 9 (3) of the Enforcement Directive requires for the ordering of a measure the entitlement of the Member State courts to order the applicant to produce all reasonably available evidence to satisfy themselves with sufficient certainty that the applicant is the right holder and that the applicant’s right is being infringed or threatened with infringement. This includes the conviction of the legal validity of the asserted IP right, which Munich I Regional Court does not include in its considerations.
9.
There is no disagreement with the finding of the Munich I Regional Court that a patent that has only just been granted cannot yet have gone through validity proceedings and that the patent proprietor naturally has no influence on whether his patent is attacked with an opposition or an action for revocation after grant.
In view of Art. 9 of the Enforcement Directive, a provision of national law that excludes the grant of interim measures based on patents that have not been confirmed in the validity proceedings would therefore be questionable. However, neither such a provision nor such case law exists in Germany.
10.
The weighing on which the submission of the Munich I Regional Court is based does not seem to take all relevant aspects into account.
First, it is in line with the statutory allocation of jurisdiction to have the questions of the legal legal validity clarified not by the infringement court, but by an body competent for the validity. It is therefore not objectionable that the safeguarding of the legal validity within the meaning of Art. 9 (3) of the Enforcement Directive is to be based on a vote by such a competent body. In view of the lack of technical expertise of the infringement courts – regularly emphasised by the infringement courts in the main proceedings – there is little to be said in favour of leaving the safeguarding of the body of law in the preliminary injunction proceedings to the infringement courts.
The basic approach of the criticised higher regional courts to require an contradictory decision in an enforceability proceeding in order to secure the validity of rights is therefore not only in line with the infringement court’s possibilities of knowledge and the fundamental distribution of jurisdiction in the German system of division of powers, but also in line with the requirement established by Article 9 (3) of the Enforcement Directive. A decision on the legal validity of a right by a competent body is a much more reliable criterion for the question of securing the existence of a right than the assessment of an infringement court that does not deal with such matters, if only for reasons of the distribution of jurisdiction.
Against this background, the accusation that the “case law put up for review” is based on an interpretation principle that is contrary to European law is incorrect. This applies all the more since the exceptions from the fundamental requirement of an contradictory decision on the legal validity of a right, which are recognised by case law, serve to enable the enforcement of a patent on the basis of a comprehensive (albeit typified) weighing of interests. There is nothing wrong with this, if only because Art. 9 (1) of the Enforcement Directive does not require that it must be possible to order provisional measures in every case, but that the courts are granted the possibility to order such measures (“may”). This includes the possibility to refrain from ordering such measures on the basis of a consideration of the degree of legal validity of the IP right.
In the order for reference, the Munich I Regional Court does name essential (but not all, see Kühnen, loc.cit., p. 469) exceptions developed in case-law. However, these exceptions were not sufficient, as they were applied so restrictively, especially by the Munich Higher Regional Court, that they remained de facto theory. Unfortunately, the Munich I Regional Court does not provide evidence for this. In view of the fact that the criticised case law of the Munich Higher Regional Court is only a little more than a year old, it is hardly possible to find meaningful evidence. This also applies to the criticised decision 6 W 1146/20 of 26 November 2020 (GRUR-RS 2020, 39651), in which the Munich Higher Regional Court only had to decide on the point of costs after settlement, whereby it did not pay much attention to the examination of the secured legal validity.
11.
Accordingly, the Munich I Regional Court criticises what it considers to be a generally too strict line in the individual case examination of the secured legal facts. In doing so, however, it does not point out any question of interpretation concerning European law that could be answered by the ECJ in a way that would promote the development of the law.
Despite all the criticism, however, the advance of the Munich I Regional Court is to be welcomed insofar as it is an expression of a dispute about the convincing solution of a legal problem that is oriented towards the matter at hand. Even a referral decision worthy of criticism has its justification and function in the struggle for the further development of law and case law.
