Preliminary Injunctions in Germany – Referral to the CJEU

In recent times, a selection of the Regional Courts in Germany has refused to grant preliminary injunctions to patent owners unless the patent has been held valid in opposition proceedings before the European Patent Office (EPO) or in nullity proceedings heard at German Federal Patent Court. This approach contrasts with that taken in many other European countries, where a Court may grant a preliminary or interim injunction without considering a patent’s validity. The restrictive approach taken by these Regional Courts has now been put into question.

Phoenix Contact GmbH & Co. KG is the owner of a granted European patent and sought a preliminary injunction from the Munich Regional Court to prevent an infringement of its rights. The Court agreed that the patent in suit was likely infringed. However, it refused to award a preliminary injunction as it considered there can only be a prospect of success in infringement proceedings if the patent has been held to be valid by the EPO or the Federal Patent Court.

The alleged infringer has opposed the European patent in question. Given the length of time opposition matters can remain pending at the EPO, it is unlikely the patent’s validity will be considered and decided by the relevant Opposition Division in the near future. As such, Phoenix’s options for the enforcement of its rights in Germany are limited.

Whilst the Court did refuse to grant a preliminary injunction, it did consider its current practice to be out of step with the European Union’s Intellectual Property Enforcement Directive and national law. As such, to seek clarity on the matter, the Court has asked the Court of Justice of the European Union (CJEU) if its approach is compatible with European law.

Whilst this issue is of significant importance to those with German patent rights, we expect a delay before the CJEU provides its answer. If the CJEU answers in the affirmative, enforcing patent rights in the European Union member states before substantive consideration of validity post-grant is likely to become more challenging. On the other hand, if the CJEU believes the approach taken in the present case is incompatible with EU law, the options for IP owners in Germany will increase. In any event, as the UK has now left the EU, the decision of the CJEU will not affect the ability of parties to obtain interim injunctions before the UK courts.