An International Guide to
Patent Case Management for Judges

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5.6.5 Provisional measures Proceedings for preliminary relief are independent of the proceedings for permanent relief

The German Code of Civil Procedure provides for summary proceedings –that is, for civil actions for preliminary relief, particularly in the form of preliminary injunctive relief (Sections 916 to 945b). This is not designed as a form of “interim relief” within the action for permanent relief but rather takes the form of a separate and independent action. Thus, all requirements (jurisdiction and venue) ought to be checked independently. Actions for interim relief and for permanent relief can therefore be entertained in different venues, and, indeed, plaintiffs often seek preliminary injunctive relief in venues whose practice is generally considered more favorable to preliminary relief. The sole exception applies to cases in which an action for permanent relief has already been filed, in which case that court would also have exclusive jurisdiction for the corresponding summary proceedings, even if the action is already pending on appeal (Section 937(1)).

The principle of separate actions also entails that a ruling on permanent relief does not automatically affect a prior ruling on preliminary relief.125 Any preliminary injunction will therefore need to be set aside by a court within the framework of the proceedings for preliminary relief. It does not cease to exist just because the court in the action for permanent relief dismisses the action.126 Ex parte proceedings: protective writ

Preliminary injunctive relief can be granted ex parte, and, indeed, ex parte injunctions are still common in trademark or unfair competition matters; but it is the real exception in patent cases because the complexity of the matters makes it mostly indispensable to give the defendant its day in court before making a decision.127 To avoid ex parte decisions, the potential defendant can file a “protective letter” with the possible infringement courts (Section 945a of the Code of Civil Procedure). This is an anticipated defense brief whose purpose is to establish at least sufficient doubt with regard to the merits of the case for a preliminary injunction such that the court does not grant it without a hearing. However, filing such a protective letter is not univocally advantageous for the plaintiff. Rather, there are two main risks to be considered:

  • The plaintiff and the court can argue that, by virtue of the protective letter, the defendant had a chance to be heard, so an ex parte injunction could be issued, and the general concerns of not hearing the defendant would be mitigated. Thus, filing the protective letter could have the reverse effect and enable an ex parte injunction rather than avoiding it.
  • If the injunction is nevertheless issued, it can be served directly on the defendant’s counsel, which is a very significant shortening of regular service, particularly of service abroad under the Hague Service Convention.128

If the injunction is granted ex parte, the plaintiff must serve it within a one-month term; otherwise, it becomes void (Section 929(2) of the Code of Civil Procedure). The service is typically done through a bailiff that the plaintiff’s counsel must retain. It must be effected on the defendant’s counsel if such counsel for the proceedings exists (e.g., when a protective writ was already filed). Only if the preliminary injunction is actually served (in time) does it become binding on the defendant. The defendant can oppose the ex parte injunction, and the court will schedule a hearing day following such opposition (Section 924).

If the court is of the preliminary view, having analyzed the plaintiff’s application, that the grant of an ex parte injunction is not possible, the court will typically issue a notice to that extent to the plaintiff (sometimes also by way of a phone call). It is then up to the plaintiff to either withdraw the action or to maintain it. If maintained, the court can either dismiss the application right away (ex parte) or schedule a hearing date and effect service of process (application and summons) on the defendant. The ex parte dismissal can be appealed by the plaintiff, and this proceeding would continue ex parte at the appellate level. The appellate court can grant the requested relief ex parte or can affirm the dismissal, summon the defendant or remand the case for further inter partes proceedings. Distinct procedural characteristics of proceedings for preliminary relief compared to permanent relief

The process of inter partes summary proceedings for preliminary relief is generally similar to that described above for the main proceedings for permanent relief. The process is significantly more accelerated, however, so a hearing date should take place a couple of weeks or a few months after the service of the application. Furthermore, there are a number of procedural differences that are due to the inherently accelerated nature of the proceedings:

  • Expert evidence is not available in interim proceedings (Sections 920(2) and 294(2) of the Code of Civil Procedure).
  • There is no separate hearing date scheduled for the taking of evidence, so witnesses will not be summoned; rather, the parties need to ensure that they are readily available for the hearing date (“präsenter Zeuge”; cf. Section 294(2)).
  • There is no preclusion of facts or evidence. Thus, even if the court sets a term, the parties can push back submitting any facts or evidence to the final hearing.
  • There is also no stay of the proceedings pending the nullity action or opposition. Rather, if there are concerns regarding the validity of the patent-in-suit, the application must be dismissed.
  • The evidentiary threshold is lower, as “Glaubhaftmachung” (prima facie evidence) is sufficient, which can be better translated as “demonstrating an allegation as to fact to the satisfaction of the court” (official translation of the Ministry of Justice: cf. Sections 920(2) and 294). There is no limitation to the formal evidence set forth above, so affidavits are also possible and frequently used.
  • The decision of the court is typically pronounced on the day of the hearing, so no separate hearing date for pronouncing the ruling is set as for most of the cases in the main action.
  • The relief granted in the court’s ruling is eo ipso enforceable, so the court does not need to separately pronounce the preliminary enforceability (Section 928) and therefore typically does not also set a security bond to be posted for making the injunction enforceable (even though that is possible, cf. Section 921). Requirements for preliminary injunctive relief Requirements for interim relief: “Verfügungsanspruch” (substantive infringement claim) and “Verfügungsgrund” (specific legal interest for preliminary relief)

As to the requirements for interim relief under the general provisions of the Code of Civil Procedure, two categories can be distinguished: the substantive requirements regarding the asserted claim (“Verfügungsanspruch”) and the specific reason or interest justifying interim relief prior to permanent relief (“Verfügungsgrund”). Within the analysis regarding the “specific interest,” both “urgency” and “balancing the equities” of the matter (“Verfügungsanspruch”) need to be addressed, while the balancing of interests also encompasses the analysis regarding the validity of the patent-in-suit.

The standards for the “Verfügungsanspruch” – mainly for claim construction and infringement issues – are generally the same that apply in the main proceedings with the above-described difference regarding evidence. Thus, different from other jurisdictions, the merits of infringement play a decisive role in the grant of preliminary injunctive relief rather than putting the primary focus on an equity analysis weighing the interests affected by granting or not granting the requested preliminary relief.

This being the case, the practically most critical part of German patent infringement proceedings is the “Verfügungsgrund”: the specific legal interest that the plaintiff must show for pursuing its claims in the form of interim proceedings. In this regard, it must be considered that preliminary relief under the German Code of Civil Procedure, as a rule, should only preserve the status, ensuring that the enforcement of rights following an action for permanent relief will not be frustrated.129 In matters for injunctive relief, by definition and inevitably so, the permanent relief is not only preserved but “moved ahead” (“vorweggenommen”). Even so, such preliminary relief is possible and is not limited to cases of irreparable harm for the plaintiff. On the contrary, if the merits of the case are clear on the face of it, the threshold for the specific legal interest is generally not too high. Yet, the merits of a patent infringement case are only rarely sufficiently clear in this respect – neither on infringement nor on validity. This is due to both factual and legal reasons and is particularly the case for the validity side, for which the bifurcation element aggravates these problems.

Thus, while preliminary injunctive relief is the practically prevailing form of dealing with trademark and unfair competition disputes, the German courts are rather cautious when it comes to preliminary reliefs in patent matters. The rationale is that such matters are generally factually much more complex, and the impact of the injunction is generally much more severe than in, for example, trademark matters. Furthermore, the actions for permanent relief are much quicker in Germany compared to other jurisdictions, so the practical need for preliminary relief is less urgent. Yet, despite this general reservation, injunctive relief in patent matters is practically possible if the infringement analysis is not too complex. Thus, while it is possible to produce party expert opinions to corroborate the infringement analysis and its factual basis (genuine “expert evidence” is not available in summary proceedings, cf. Sections 920(2) and 294(2) of the Code of Civil Procedure), a “battle of experts” is, in many cases, taken as an indication that the matter at bar is unsuitable for preliminary proceedings. The more the plaintiff must argue to make the infringement case, particularly regarding the factual basis, the higher the likelihood the court deems the matter unsuitable for preliminary relief. Validity

The most difficult factor in most of the patent infringement actions for preliminary relief is validity. As the German system provides for bifurcation, the infringement courts generally – and also in actions for permanent relief – do not rule conclusively on validity but only need to engage in a “prediction” as to the outcome of the (opposition or nullity) actions challenging the validity – that is, the infringement courts assess the prospects of success of the validity challenges. Such an assessment is similar in cases for preliminary relief. However, in many cases, due to the accelerated nature of actions for preliminary relief, the defendant may not have had sufficient time to put together a substantiated validity challenge (requiring searches of prior art and corresponding assessments).

Additionally, as the actions challenging the validity of the patent-in-suit take significantly longer than even the infringement actions for permanent relief, the resulting “injunction gap” considerably widens in the case of preliminary injunctions for patent infringement. Therefore, the case law of all of the relevant appellate circuits in Germany states that preliminary injunctions in patent infringement matters generally require that the patent-in-suit has already been sufficiently confirmed in opposition or nullity proceedings, at least in the first instance.130

The Regional Court of Munich has held that this practice is at odds with the EU Enforcement Directive,131 according to which preliminary relief ought to be provided. The court has therefore referred a case to the European Court of Justice,132 asking it to clarify this issue of law: that is, whether the general requirement for an inter partes decision on validity contradicts EU law and should therefore be abandoned.133 The referral has been criticized because it did not sufficiently describe the exceptions to the above-mentioned rule, according to which, for special scenarios (e.g., irreparable harm to the plaintiff in cases of an imminent market entry of a generic medical product, evident lack of merits of the validity attack, or general acceptance of a patent in the market), the grant of a preliminary injunction is possible even in the absence of a previous inter partes decision on validity. The prevailing literature considers that system adequate, with those exceptions, and not in violation of the EU Enforcement Directive.134 Urgency

Urgency is a necessary requirement for any action for preliminary relief. This requirement does not imply that the right holder would need to proactively check the market for infringing activities. However, once specific indications for infringement have been brought to the right holder’s attention, they must act without undue delay to explore the facts. Once the facts and evidence have been explored without undue delay, case law expects that the motion for interim relief is filed within a month.135 Some appellate circuits are more generous in this regard and let two or three months suffice.136 Urgency also places significant limitations on the plaintiff’s procedural strategy. The plaintiff must be very careful to engage in settlement negotiations and, in this connection, agree to extend terms or push back hearing dates, even dates for pronouncing a decision. Such acts can be taken as showing a lack of genuine urgency, so the case would need to be dismissed, even if already on appeal.