Friday, February 20, 2015

Hoppe-Jänisch on Important German Patent Cases Since 2013 (Part 2)

I mentioned last month (here) that Daniel Hoppe-Jänisch had recently published an article titled Die Rechtsprechung der Instanzgerichte zum Patent- und Gebrauchsmusterrecht seit dem Jahr 2013 ("The Patent and Utility Model Case Law of the Lower Courts Since 2013") in the December 2014 issue of GRUR RR.  My previous post provided a brief overview of Mr. Hoppe-Jänisch's discussion of some recent German cases on injunctions and royalties, and stated that I might return to some of the other topics discussed in the paper in a future post.  (Since then, Mr. Hoppe-Jänisch has sent me an English-language version of the article, which I believe will be published sometime in the near future.  The quotes below are from this version of the paper.)

The portion of the paper on preliminary injunctions states, among other matters, that in pharmaceutical patent litigation German courts sometimes have "waived the requirement of a positive decision on the patent's validity as evidence for a sufficient legal validity," because of the "often . . . enormous damage the generics companies would cause if the patent would later be upheld."  (Recall that, in Germany,  infringement and validity are bifurcated, but that courts are hesitant to award preliminary injunctions absent some indication that the patent is valid.)  Nevertheless, according to Mr. Hoppe-Jänisch, the Düsseldorf District Court has indicated that such a waiver is not appropriate in other pharmaceutical patent cases--typically "the patent must have already survived opposition or nullity proceedings"--nor, according to a different case from that same court, is a waiver appropriate when the moving party asserts, as a basis for the preliminary injunction, only an unexamined utility model.

Another requirement for obtaining a preliminary injunction in Germany is urgency (Dringlichkeit).  One of the cases Mr. Hoppe-Jänisch discusses on urgency is a decision of the Hamburg District Court holding that the mere fact that a product has been advertised at a trade fair in another country is not sufficient to demonstrate an urgent need for a preliminary injunction in Germany.  (However, there is a split of opinion on this issue.) 

On the issue of stays, the Karlsruhe Oberlandesgericht held that a "qualified note" (qualifizierter Hinweis) or "interim assessment of the merits" from the Bundespatentgericht questioning the validity of the patent in suit usually leads to a stay of execution.  In addition, the Düsseldorf District Court in another case held that a "one product company" is not necessarily faced with irreversible harm (thus potentially justifying a stay under section 712 of the Civil Code), if there are alternative embodiments available to it. 

I'll provide more information on publication of the English-language version of the paper when it becomes available to me.  For previous discussion of preliminary injunctions in Germany on this blog, see here here, and here.

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