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Restrictive Preliminary Injunction Practice in Germany Challenged Following Referral to CJEU

Over the last few years certain Regional Courts in Germany have refused to grant preliminary injunctions to patentees unless the patent has been held valid in opposition proceedings at the European Patent Office (EPO), or in nullity proceedings before the German Federal Patent Court. This contrasts with practice elsewhere in Europe, including in the UK, where a preliminary injunction can be granted without considering the validity of the patent. This restrictive practice in Germany, which has developed from case law of the Munich Higher Regional Court, has now been challenged.

Phoenix Contact GmbH & Co. KG, the owner of European patent number EP2823536, sought a preliminary injunction from the Munich Regional Court to restrain alleged infringer Harting Electric GmbH & Co. KG. The Court agreed with the patentee on the issue of infringement. However, applying the case law the Court refused to award the injunction on the basis that there is generally only a prospect of success in infringement proceedings if the patent has been held to be valid by the EPO or by the Federal Patent Court. Harting filed an opposition against the patent at the EPO on 15 January 2021 and it will be some time until proceedings before the Opposition Division are concluded. The situation thus leaves Phoenix currently unable to enforce its patent in Germany.

Although the Court refused to award the preliminary injunction, it considered the recently-developed case law and practice to be contrary to the European Union's Intellectual Property Enforcement Directive 1and German national law. To clarify the law the Court has consequently referred the following question to the Court of Justice of the European Union (CJEU):

Is it compatible with Article 9(1) of the Directive that the Higher Regional Court refuses to grant an injunction for patent infringement as a matter of principle if the patent in dispute has not yet survived opposition or nullity proceedings at first instance?

It will be some time before the CJEU provides an answer. If the case law of the Munich Higher Regional Court is affirmed, it will likely become more difficult to enforce patents in member states of the European Union prior to substantive infringement proceedings. This will not be the case in the UK however, where any such decision of the CJEU will have no effect following the departure of the UK from the European Union.

1 Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.