The first decisions of the European Unified Patent Court (UPC) relating to preliminary injunctions have been issued and, as could be expected, these decisions were issued in proceedings in which a party seeks interim relief against an alleged patent infringer.
Last year, on 28 April 2022, the European Court of Justice (ECJ) issued its first judgement regarding preliminary injunctions in patent litigation in the case Phoenix Contact v. Harting (Case number C-44/21). The main question for the ECJ was whether preliminary injunctions in patent proceedings can only be issued if the patent in question has not survived at least one challenge to its validity, such as an opposition to grant or action for revocation of the patent.
The case was brought to the ECJ by the District Court of Munich. Unlike in the new European UPC system, questions about the validity of patents in Germany are handled by a different court than the court handling the infringement action (so called bifurcated system). The courts in Düsseldorf (in particular) and also the Court of Appeal in Munich had been very reluctant to grant preliminary injunctions if the patent had not survived at least one challenge to its validity.
The ECJ decided that preliminary injunctions can be granted even if the patent’s validity has not been tested. The court noted that, otherwise, infringers might refrain from launching challenges against the patent in order to block such preliminary injunctions.
It should be noted that the German jurisprudence had already developed a set of exceptions under which a preliminary injunction can be granted, even if the patent had not undergone a validity challenge prior to the proceedings relating to interim relief. According to these exceptions, the issuance of an interim injunction without a first instance decision in the validity challenge is possible if
- the defendant (alleged infringer) was already involved in the granting procedure by filing his own objections; in other words, the prosecution was effectively already conducted as a two-sided procedure,
- the IP right on which the injunction is based is generally considered as being valid,
- the objections to the legal status of the IP right prove to be groundless on summary examination, or
- it is exceptionally unreasonable for the applicant to wait for the outcome of the opposition or revocation proceedings due to extraordinary circumstances, e.g. due to the market situation.
The question that was raised to the ECJ by the District Court of Munich reviewed these exceptions, but said that they are only of theoretical nature and that courts (or at least the Appeal Court in Munich) would not enforce them. Many commentators in Germany, notably a number of judges of the appeal courts which developed the jurisprudence, pointed out that the ECJ did not decide on the basis of all the facts that would have been necessary, because the judges were of the opinion that the exceptions have to be taken into account in more detail. Although the Courts of Appeal are reluctant to grant preliminary injunctions, the courts in Germany have developed a set of rules under which the preliminary injunction can be granted nevertheless. This has not been taken into account by the ECJ according to the commentators.
In any case, the ECJ’s decision provides greater clarity .It makes clear that a national jurisprudence which makes it necessary for patents to undergo a challenge to their validity before an interim injunction is granted does not comply with EU law. At least there have to be exceptions which are not only of theoretical nature.
However, for patent holders this verdict still does not provide certainty about whether they can be sure to obtain a preliminary injunction if the patent has not undergone a challenge to its validity proceeding even if the holders are confident that the patent would survive such challenges.
