Preliminary Injunction in Patent Litigation

November 2022

The CJEU rejects the German legal practice of linking the issuance of a preliminary injunction against a patent to whether the patent has already survived a stay of proceedings in one instance. A preliminary injunction is an effective tool of at least quickly eliminating a disruptive action. Speed is often a decisive factor in enforcing a claim, even in the case of the infringement of a patent by a third party. 

Building of EuGH ECJ
CJEU judgment C-44/21 of 28 April 2022
Facts of the case

In order to obtain a preliminary injunction in patent litigation, it is necessary to have not only a claim for injunction arising from the infringement of a patent by a third party, but also a ground for injunction. In addition to the urgency or the substantial impediment to the enforcement of rights by the applicant without interim legal protection, the question of an infringement of the scope of protection and the legal existence of the patent also play an essential role in the grounds for the injunction, which must all be fulfilled with sufficient probability in the judicial consideration. 

With a few exceptions, the legal validity of a patent has so far been considered sufficiently probable in the case law of the higher courts if the patent has already successfully survived a two-sided validity procedure (opposition or nullity proceedings) in the first instance. The mere grant of a patent by the Office, even if no opposition was filed in due time, was usually not recognized by the higher courts as a sufficiently probable existence of rights. This opinion of the higher courts was based on the fact that a large number of patents do not survive two-sided validity proceedings unharmed and that the scope of protection is often at least partially restricted in the validity proceedings. 

So far, preliminary injunction only after two-sided validity proceedings

In practice, however, only a small fraction of granted patents go through opposition or nullity proceedings. Therefore, doubts arose on the part of the District Court with regard to the previous legal practice in injunction proceedings, in particular with regard to Directive 2004/48/EC of the European Parliament and of the Council of April 29, 2004 (“Enforcement Directive”), according to which the courts may order interim protective measures to prevent/prohibit infringement of the protected subject matter. Accordingly, interim measures in particular are intended to avert further damage at an early stage, but this appeared doubtful as a result of the case law of the higher courts. Therefore, the question of the issuance of provisional measures was referred to the CJEU by the District Court in view of the case law of the higher courts.

Decision of the European Court of Justice

In its judgment (C-44/21 of April 28, 2022), the CJEU rejected the German legal practice. According to the CJEU, the issuance of a preliminary injunction in patent litigation may not be linked in principle to whether the patent has already survived a legal status proceeding in one instance. The current legal practice leads to an increased disadvantage of patent owners. 

In its reasoning, the CJEU states, among other things, that the Enforcement Directive is intended to establish a national minimum standard for the enforcement of intellectual property rights and precisely to provide effective legal remedies in the Union to prevent, stop or remedy any infringement of an existing right, in this case a granted patent. Accordingly, national proceedings would be almost ineffective if they were based on the previous legal practice of the higher courts, since this would significantly inhibit the enforcement of the existing right. In addition, it is precisely one of the tasks of the Enforcement Directive to enable a high and uniform level of protection in the Union, which, however, is contrary to the previous legal practice. 

According to the CJEU, it must also be possible to enforce a patent in an injunction procedure in order to obtain interim legal protection, without the patent having to go through a two-sided validity procedure. The patent proprietor must be granted corresponding protection also in preliminary injunction proceedings by the national interpretation of the law in conformity with the EU, since especially in this procedure the time frame plays an important (and sometimes decisive) role. 

In order to protect the defendant, the legislator has also already provided the court with possible measures, for example, the possibility of ordering the provision of security or damages in the event that the injunction is subsequently revoked. Due to the principle of procedural equality of arms in interim legal protection established by the Federal Constitutional Court, the issuance of an interim injunction in patent disputes often only takes place after the parties have been heard. In this case, the defendant also still has the opportunity to present the legal status of the patent in dispute and thus to make the legal status appear questionable in order to prevent the issuance of a preliminary injunction.

Key Takeaways

Previous national legal practice led to increased disadvantages for patent holders. The CJEU has now strengthened the rights of intellectual property owners to enforce their claims more quickly with the help of the preliminary injunction – without the previously required first-instance opposition or nullity proceedings.

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Image source: CJEU

Dr. Philipp Ganz

Dr. Philipp Ganz Patent Attorney

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