The ECJ has handed down his judgment in case C 44/21. At the end of December 2020, CBH client Phoenix Contact had applied for an interim injunction, which became the subject of a referral by the District Court Munich I. The decision has the potential to reshape the PI situation for patents in Germany.

The referral concerned the question of whether preliminary injunctions for patent infringement could be denied on the basis that the patent’s validity had not been “confirmed” on top of the examination during prosecution. The District Court Munich I affirmed both, the validity of Phoenix Contact’s patent as well as its infringement (CBH Munich: Hannes Jacobsen, Paul Szynka; Maikowski&Ninnemann: Dr. Christoph Schröder). However, the District Court considered itself unable to issue an injunction in light of the more recent jurisprudence of the Higher Regional Court Munich.

With the decision “Electric connecting terminal “, the Higher Regional Court Munich had taken a more restrictive approach after many years, and in doing so had moved closer to the practice of other higher regional courts. A significant number of practitioners considered the new Munich stance as comparatively “narrow” even compared to the long-established case law of the Düsseldorf Higher Regional Court and discussed intensively whether the Higher Regional Court Munich’s decision stipulated an “exhaustive” catalog of exceptions.

Thus, the question arose whether the principle that a preliminary injunction for infringement cannot be granted for a patent that has “only” been granted after substantive examination, is compatible with the Enforcement Directive, which does not recognize the requirement of an adversarial examination of the IP right’s validity – which constitutes the main group of exceptions in German case law.

The ECJ has now answered the question referred by the 21st Civil Chamber 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 the grant of provisional measures for patent infringement is in principle refused if the patent at issue has not survived at least first instance opposition or revocation proceedings.

To the judgement:

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