The Court of Justice of the European Union Protects Patent Holder

US Analogy: This would be like the US Supreme Court saying that a US patent holder does not need to win a validity challenge, like a PTAB or Re-examination proceeding, to secure a PI for patent infringement.

Why this CJEU case is important: It makes it a little easier to get PI in Germany and reverses a trend in Germany to make injunctions harder to get.
More importantly, the Unified Patent Court (UPC) is likely to start hearing cases in Spring of 2023. The UPC will need to have PI law to follow. This CJEU case will almost certainly be part of that law. It is a ruling that is supportive of patent holders. It is EU wide law and applies to more than just the German Regional courts, reaching to France, Ireland, Netherlands, etc.

Discussion: The CJEU acts somewhat like a Supreme Court for law within the EU, reviewing EU directed law and rendering decisions on that EU law. Those decisions are effective across the member states of the EU. As a reminder for US patent attorneys the EU member states include, in no particular order, Germany, France, Italy, Ireland, the Netherlands, Spain, Sweden, Belgium, Bulgaria, Croatia, Greece, Hungary, Latvia, Cyprus, Czechia, Denmark, Malta, Poland, Portugal, Estonia, Finland, Lithuania, Luxembourg, Slovakia, Slovenia and Romania. All these countries are subject to the rulings of the CJEU.

The EU has a law on enforcing IP rights. That law is Directive 2004/48/EC of the European Parliament and on the enforcement of intellectual property rights (The “Enforcement Directive”). The Enforcement Directive although hardly new, is not very old. It provides criteria for court granted remedies for IP infringement including interim remedies, such as preliminary injunctions. For both final and interim remedies the Enforcement Directive sets out some criteria that should be provided by all member states. One such criteria is that relief to the patent holder must avoid undue delay. That criteria applies to interim relief, like PIs as well, as long as reasonable protection for the enjoined, such as, one supposes, a monetary bond from the patent holder, can be put in place.

In the case here, a Munich Regional court hearing a patent infringement case where a PI was requested, grew uneasy about the developing PI law in Germany, at least in the Munich Region. That Munich Regional law raised to quite a high-level the amount and type of proof of patent validity required for a PI. More specifically, in Germany a higher court had indicated that the proof of a patent’s validity, for the purpose of a PI, could not be based merely on the EPO grant of the patent. Instead, some subsequent examination needed to have been made. This could be an EPO or national patent office opposition or a national court validity or revocation decision, all of which would have had to favor the patent holder.

The Munich Court referred this practice to the CJEU for a decision on whether the Munich Regional practice was in line with the Enforcement Directive. Part of the reason for this referral seems to be the Munich Court’s unease with the time delay caused by requiring a patent holder to make it through an opposition, a process that the patent holder has little ability to expedite. In the particular case an EPO opposition had just been initiated a few days before this Munich Regional Court was to rule on the PI. It would be ongoing for over a year.

The CJEU in light of these facts and reviewing the words of the Enforcement Directive found that the Enforcement Directive “must be interpreted as precluding national case-law under which the adoption of interim measures on grounds of infringement of patents is in principle refused where the patent at issue has not survived at least one opposition or nullity proceedings at first instance.” 

So, such a burden and delay cannot be placed on the patent holder in the EU.