Presumption of validity of patents as decisive criterion – when 1/3 is already enough?

von Martin Hackler and Sebastian Ochs | 03. Mai 2022 | Know-How


The preliminary injunction is a sharp sword. It can stop (alleged) patent infringement effectively. However, the economic repercussions for (alleged) patent infringers can be enormous.

Accordingly, it is important for the courts not to render a decision in the preliminary injunction proceedings that proves to be wrong in the main proceedings and whose economic consequences cannot be revised adequately. On the one hand, this may concern the case that the attacked embodiment does not make use of the technical teachings of the patent. However, uncertainty may result in particular from the question whether the patent is valid. Particularly in the case of ex parte decisions, the problem arises that the defendant cannot comment on the validity of the patent vis-à-vis the infringement court. If one believes the statistics that only about 1/3 of the patents are maintained in validity proceedings without limitations, a critical evaluation of the validity seems more than just appropriate.

Inevitably, this creates tension between effective legal protection and the conflicting economic interests of the parties to the preliminary injunction proceedings.

German jurisprudence

In order to ensure a higher degree of certainty for the parties, German courts established a case law practice in recent years according to which a preliminary injunction will only be granted if the validity of the patent is sufficiently proven. Also due to the principle of bifurcation between infringement and validity proceedings, a sufficiently proven validity should, in general, (only) be assumed if it has been confirmed at least in the first instance of opposition or nullity proceedings. Exceptions to this principle applied but have been handled restrictively (see OLG Karlsruhe, judgement of 23.9.2015 – 6 U 52/15 – Ausrüstungssatz; OLG Munich, judgement of 12.12.2019 – 6 U 4009/19 – Elektrische Anschlussklemme; OLG Düsseldorf, judgement of 9.7.2021 – 2 U 4/21 – Cinacalcet III).

The original examination decision of the patent office should not be sufficient (remember the 1/3 quota of maintained property rights without any limitations).

This assessment was not shared by the 21st Chamber of the Munich Regional Court I (case ref. 21 O 16782/20) under its then Presiding Judge Tobias Pichlmaier. Specifically, it had to decide on the issuance of a preliminary injunction on basis of a patent that had been granted only a few weeks earlier.

Submission question

Instead of issuing an order that would (arguably) have been overturned by the Munich Higher Regional Court, the Chamber took the proceedings as an opportunity to refer the following question to the European Court of Justice (ECJ) by way of a preliminary ruling pursuant to Article 267 TFEU by order of 19 January 2021:

„Is it compatible with Article 9(1) of [Directive 2004/48] if German Higher Regional Courts (Oberlandesgerichte), which have jurisdiction at last instance in proceedings for interim relief, refuse, in principle, to grant interim measures for patent infringement if the validity of the patent in dispute has not been confirmed in opposition or invalidity proceedings at first instance?“

Art. 9 I Directive 2004/48/EC (so-called Enforcement Directive) obliges the Member States, inter alia, to ensure that the competent courts may

„(…) issue against the alleged infringer an interlocutory injunction intended to prevent any imminent infringement of an intellectual property right, or to forbid, on a provisional basis and subject, where appropriate, to a recurring penalty payment where provided for by national law, the continuation of the alleged infringements of that right, or to make such continuation subject to the lodging of guarantees intended to ensure the compensation of the rightholder (…)“.

According to the Chamber, this possibility does not exist if the Higher Regional Courts as last instance consider it necessary to confirm the validity via opposition or nullity proceedings. The Chamber did not make the non-exhaustive exceptions defined by the Higher Regional Courts subject of the referral.

ECJ decision (judgment of 28 April 2022, case C44/21-)

On the basis of the case law set out in the referral, the ECJ answered the question referred to it as follows:

„Article 9(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as precluding national case-law under which applications for interim relief for patent infringement must, in principle, be dismissed where the validity of the patent in question has not been confirmed, at the very least, by a decision given at first instance in opposition or invalidity proceedings.“

Thus, the decision refers in principle to a national case law under which supposedly without exception,

„the patent concerned may enjoy interim judicial protection only where the validity of that patent has been confirmed by a decision given at first instance in patent validity proceedings.“ (para. 33)

However, the ECJ furthermore confirms the view of the referring chamber that

„European patents enjoy a presumption of validity from the date of publication of their grant. Thus, as from that date, those patents enjoy the full scope of the protection guaranteed, inter alia, by Directive 2004/48 (…).“ (para. 41)

The ECJ justifies the fact that the patent proprietor’s need for protection prevails in this respect by the fact that the defendant is adequately protected by the further provisions of Article 9 (5) to (7) of the Enforcement Directive: time limitation, insofar as no proceedings on the merits are instituted; order of a security deposit; obligation of the applicant to pay damages.

And now?

The ECJ’s decision does not change anything for patents when validity has already been confirmed in opposition or nullity proceedings. Their validity was already considered sufficiently proven beforehand.

The decision is also unlikely to be relevant for owners of German utility models (Gebrauchsmuster) – they are granted without real examination that could justify any presumption of validity.

On the other hand, the decision is landmark for owners of German and European patents where validity has not yet been confirmed in opposition or nullity proceedings. The issuance of a preliminary injunction and thus a quick enforcement of rights should be more promising in the future after the ECJ’s decision.

However, it remains to be seen what discretion infringement judges now have in injunction proceedings with regard to validity of the respective patent. How far does the „presumption of validity“ as stated by the ECJ extend? It is unclear whether the ECJ took into account the aforementioned statistical surveys on the outcome of the validity proceedings, but in the end they are now anyhow irrelevant. Based on this statistical considerations, the „presumption of validity“ could already be regarded as shaken if opposition or nullity proceedings are pending. Therefore, criticism on the decision is to be expected.

The response of the Higher Regional Courts remains to be awaited with bated breath.

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