In its decision dated 12 December 2019, the Higher Regional Court Munich ruled that in principle, an interim injunction for patent infringement should not be ordered unless it can be satisfied that the validity of the patent-in-suit is ensured, for example where the patent is shown to have “survived” contested proceedings on validity (Higher Regional Court Munich, decision of 12 December 2019, case no. 6 U 4009/19; GRUR 2020, 385 – “Electrical Connection Terminal”).
As a matter of principle, German courts only grant interim injunctions if the patent is clearly infringed and if the matter is urgent. The matter is assumed not to be urgent if the plaintiff acts slowly, for example, if it waits more than one month with filing the request for interim injunction from the day it has all necessary evidence for a successful request. In addition, however, plaintiff must also prove that the validity of the asserted patent is sufficiently reliable. According to its previous case law (Higher Regional Court Munich, decision of 26 July 2012 – case no. 6 U 1260/12; BeckRS 2012, 16104), the Higher Regional Court Munich considered the grant of the patent-in-suit by the competent authority to generally meet the high requirements for validity.
Whilst the latest decision deviates from the Court’s previous case law, it is brought into consistence with the approaches of the Higher Regional Courts Düsseldorf (Higher Regional Court Duesseldorf, decision of 29 April 2010 – case no. 2 U 126/09; BeckRS 2012, 16104 – “Urinary Catheter Set”) and Karlsruhe (Higher Regional Court Karlsruhe, decision of 23 September 2015 – case no. 6 U 52/15; GRUR-RR 2015, 509 – “Equipment Set”). From now on sufficient evidence of validity shall generally only be assumed if the patent-in-suit has passed first instance opposition or nullity proceedings. Among other things, the decision was motivated by the fact that the Court had recently assumed validity of various patent-in-suits, which later in the respective validity proceedings turned out to be wrong.
This decision of the Higher Regional Court Munich has been commented in the legal press differently. On the one hand, the harmonisation of the case law of the patent infringement courts in Munich with Duesseldorf and Mannheim/Karlsruhe as well as the improvement of the position of the defendant has been welcomed. On the other hand, there has been criticism that the court did not further trace the development of the exceptions to the general principle that the asserted patent must have been tested in validity since the Düsseldorf “Urinary Catheter Set” decision (cf. Wuttke, GRUR-Prax 2020, 106, “Higher Regional Court Munich: Strictest requirements for validity in the case of interim injunctions in patent and utility model matters”). Accordingly, exceptions may be applied, inter alia, in connection with generics or in case of imminent expiry of the patent-in-suit. In addition, important opinions have been raised in favour of a statutory presumption of urgency in patent law (cf. Schacht, GRUR-Prax 2020, 120, “The matter is urgent: Pleading for a legal presumption of urgency in patent matters”). Such a presumption has already existed for some time in the Act against Unfair Competition (Sec. 12 II) and in the Act on the Legal Protection of Designs (Sec. 39) and was recently introduced into the Trademark Act (Sec. 140) by the “Markenrechtsmodernisierungsgesetz” (Trademark Law Modernization Act). The patent, as the most extensively examined intellectual property right, should not be cut off from access to interim injunctions because of general doubts about the correctness of the decision to grant.