Preliminary injunctions in Germany

I discuss the topic of preliminary injunctions in Germany at pp. 243-44 of my book.   As I noted there, the governing statute is article 940 of the Code of Civil Procedure, which (in Cummings et al.'s elegant translation) reads “[i]nterlocutory injunctions are furthermore admissible for the purpose of regulating an interim state regarding a legal relationship in dispute, in particular regarding continuous legal relationships, in case this seems necessary for the avoidance of considerable detriment, for the prevention of imminent force or for other reasons.”  George Cumming et al., Enforcement of Intellectual Property Rights in Dutch English and German Civil Courts 252 (2008).   (See also ZPO article 935, which I would translate somewhat loosely as "Preliminary injunctions in regard to a matter in dispute are permissible, when it appears that a departure from the status quo would undermine or frustrate a party's rights.").  In preliminary injunction proceedings, German courts also consider the probability of validity, even though (unlike the practice in the U.S. and many other countries) defendants in a civil action for infringement may not raise invalidity as a defense (but rather must try to invalidate the patent in a separate invalidation action).  And although doubts about validity counsel against granting an interlocutory injunction, in the 2008 Olanzapine decision the Düsseldorf Oberlandesgericht reversed a denial of a preliminary injunction, even though the patent in suit had been found invalid by the court of first instance in the parallel invalidation proceeding.   As I wrote (at pp. 243-44), the court

noted that ZPO article 940 requires a showing of urgency not only in a strictly timely sense but also in the sense of imminent harm, which, however, must be balanced against the interests of the defendant. In patent cases in particular, a preliminary injunction normally requires both that the infringement be uncontested or sufficiently clear without recourse to expert consultation and that the patent’s validity also must be adequately certain (hinlänglich gesichert). As a result, doubts as to validity tend to undermine the preconditions for the granting of a preliminary injunction.  Normally, then, a patent that has been found invalid by the Bundespatentgericht cannot be the basis for a successful motion for a preliminary injunction. Nevertheless, the court recognized an exception when the infringement court can determine that the validity decision is clearly erroneous (evident unrichtig), based upon the parties’ statements of facts and the infringement court’s own expertise borne of experience.

The Olanzapine decision can be found here; a translation into English that I consulted, here.  My book also lists several secondary sources on the topic.  Another book that goes into some depth on the topic is Thomas Kühnen, Patent Litigation Proceedings in Germany:  A Handbook for Practitioners, paras. 1730-1896 (Frank Peterreins tr., 6th ed., 2013).

Three additional sources on preliminary injunctions in Germany that recently came to my attention are Askan Deutsch, Preliminary Injunction Proceedings in German Intellectual Property Disputes, 8 J. Intell. Prop. L. & Prac. 136 (2013); Roland Böhler, Einstweilige Verfügungen in Patentsachen, 2011 GRUR 965 (the title translates to "Preliminary Injunctions in Patent Cases"); and Tobias Wuttke, Die aktuelle gerichtliche Praxis der einstweiligen Unterlassungsverfügung in Patentsachen-zurück zu den Anfängen? 2011 Mitt. deutschen Patentanwälten 393 (translated:  "Current Judicial Practice Regarding Preliminary Injunctions in Patent Cases:  Back to the Beginning?").  What follows is a summary of some of the authors' more salient points.

According to Deutsch, German courts are less reluctant to grant preliminary injunctions in patent cases than they used to be.  As is the case in many countries (though not the U.S.), it's possible to file a motion for a preliminary injunction before commencing a civil action for infringement.  Following Deutsch's account, the applicant is well-advised to file for the preliminary injunction within 30 days of becoming aware of the allegedly infringing activity.  Often he will file a cease-and-desist letter first, which the prospective defendant may ignore or may respond to by (1) filing a protective writ (Schutzschrift) with any competent court in which it might be sued, outlining why a preliminary injunction shouldn't issue, or (2) file an action for a negative declaratory judgment.  The applicant will then often file the motion for the preliminary injunction ex parte, though in complex cases the court may order the defendant to appear for a hearing before making an initial decision.  (Kühnen, by contrast, states in para. 1830 that in patent cases it is "only in exceptional cases" that a court grants an order "without the respondent having first been given the opportunity to respond."   I'd be inclined to go with Kühnen here, since he's a judge himself and his discussion is specifically directed to patent cases, not all I.P. cases; and since patent cases generally are going to be among the most complex.)   If the motion is granted ex parte, it's up to the applicant to serve the order upon the defendant within one month, after which the defendant may file an opposition, which results in an oral hearing on whether the preliminary injunction should stand. 

Böhler focuses more specifically on the substantive criteria for granting preliminary injunctions in patent cases.  First of all, the infringement must be unambiguous (eindeutig).  Typically this means that if the court would need to consult an expert, there is too much ambiguity to grant the motion.  Second, as noted above, the validity of the patent must be adequately certain.  Notwithstanding Olanzapine, subsequent cases haven't been as generous to plaintiffs as one might have expected.  In particular, the Düsseldorf Oberlandesgericht's subsequent decision in Harnkatheterset (Judgment of Apr. 29, 2010, InstGe 12, 114, available here) listed three categories of cases.  The first includes cases in which the patent has withstood a validity challenge and presents the easiest case for a finding of validity.  Even then, the opposing party might be able to come up with new evidence of invalidity that could defeat the motion for a preliminary injunction.  The second includes cases in which the patent has not been challenged.  Generally, courts won't grant preliminary injunctions here, but there are some exceptions, for example, where the patent has been on the market for a long time and no one has bothered to challenge it.  The third includes cases where the patent has been invalidated, and here you wouldn't expect a preliminary injunction to issue.  Olanzapine was an extraordinary decision, where the court was sure that the invalidation decision would be reversed on appeal (and as it turns out, it was).  More importantly, Olanzapine shows that the criteria for granting an injunction are not rigid rules but must be applied in a flexible, case-by-case manner.  Finally, the article discusses some recent case law on the balance of interests and urgency.

Finally, Wuttke is more critical of what he perceives as the German courts' turnaround, from being reluctant to granting preliminary injunctions in patent cases, to being more open to the possibility, to again (in Harnkatheterset) being reluctant.  He is especially concerned that it will be unduly difficult to obtain injunctions against the sale of infringing merchandise at trade fairs, and believes that this will dissipate patent value.

I'll probably have a little more to say about some recent preliminary injunction decisions in Germany in a few days.