All material subject to strictly enforced copyright laws. © 2022 Managing IP is part of the Euromoney Institutional Investor PLC group.

Germany: Forum shopping is becoming more difficult

Sponsored by maiwald-logo-cropped.PNG
手のひらを前に出すビジネスマン

In the future, it will be more difficult to obtain an injunction for patent infringement through preliminary injunction proceedings.

Generally, in preliminary injunction proceedings, the plaintiff must prove that there are no serious doubts regarding the validity of the patent. In the past, the Higher Regional Courts in Germany have applied different standards for assessing the validity of a patent.

Pursuant to the case law of the OLG Düsseldorf and OLG Karlsruhe the patent proprietor was (at least generally) only able to obtain a preliminary injunction if the validity of the patent had been examined in opposition or nullity proceedings.

The courts in Munich have so far been more patentee-friendly, stipulating that it would be sufficient for the patent owner to demonstrate that an attack on the validity of the patent would likely not be successful. 

In a recent decision the OLG Munich (judgment of December 12 2019, Case No 6 U 4009/19) expressly stated that it had abandoned this practice and instead, from then on, would follow the case law of the OLG Düsseldorf and the OLG Karlsruhe.

This lessens the chance of patent holders enforcing their patents by way of interim infringement proceedings. If the infringed patent has not undergone opposition or nullity proceedings, the patentee until now still had a chance to convince at least the courts in Munich that the validity of the patent is nevertheless sufficiently secured. Now that the OLG Munich has adopted the line of the other Higher Regional Courts in Düsseldorf and Karlsruhe, the chance of winning a preliminary injunction based on a patent that has not been challenged and confirmed has, to say the least, become rather slim.

On the one hand, the recent decision of the OLG Munich leads to more legal certainty, since all major Higher Regional Courts now apply the same principles, when evaluating whether the validity of a patent can be regarded as sufficiently confirmed to allow for preliminary injunction proceedings. On the other hand, the unified case law renders forum shopping for the patent owner less attractive and reduces the chances of patent holders enforcing their claims by way of preliminary injunction proceedings with respect to patents that were so far not challenged in opposition or nullity proceedings.

More from across our site

The US Supreme Court rejected an appeal on American Axle, dashing hopes of a judicial fix to patent eligibility uncertainty
The Copyright Office refused to grant protection on the basis that the authorship couldn’t be distinguished from the final work produced by the program
COVID vaccines top Clarivate’s new brands list; Fed Circuit reverses Coca-Cola’s TTAB win; Skechers sues Brooks; USPTO to retire Public PAIR tool; CCB sees cricket complaint
Lawyers should pay attention to APJs’ questions and remember that PTAB proceedings aren’t jury trials, say former PTAB judges
The USPTO cancelled ‘Galavava’ and 'Surfstar Wake' and partly cancelled ‘Heika’ this month
We have published all the 2022 rankings of the leading firms for patent litigation and protection work
In-house and private practice counsel say UK judges have raised the bar for preliminary injunction requests
António Campinos will serve another five years as EPO president – perhaps he’ll calm unrest at the office in that time
LGBTQ IP lawyers say using rainbow colours and posting solidarity messages on social media must be followed by concrete action
Brand owners bemoan counterfeiters’ latest wheeze and say enforcement authorities should get more involved
We use cookies to provide a personalized site experience.
By continuing to use & browse the site you agree to our Privacy Policy.
I agree