Referral of 21st Chamber of Munich Regional Court
ECJ ruling

This article explores the recent ECJ ruling on the requirements for validity of a patent in preliminary injunction proceedings.


Preliminary injunctions
Preliminary injunctions can stop (alleged) patent infringement effectively. At the same time, the economic repercussions for (alleged) patent infringers can be enormous.

Accordingly, it is indispensable that the courts do not render a decision in preliminary injunction proceedings that proves to be wrong in the main proceedings as it may be difficult to adequately revise the economic consequences of such a decision. This may arise where the attacked embodiment does not make use of the technical teachings of the patent.

In particular, though, uncertainty may emerge from the question of whether the patent is valid. According to statistics, only about one-third of patents are maintained in validity proceedings without limitations – therefore, a critical evaluation of the validity seems more than appropriate. In the case of ex parte decisions, it is often the case that the defendant cannot comment on the validity of the patent through the infringement proceedings.

Inevitably, this creates tension between effective legal protection and the conflicting economic interests of the parties to the preliminary injunction proceedings.

German jurisprudence
In order to ensure a higher degree of certainty for the parties, the German courts established a case law practice in recent years according to which a preliminary injunction will only be granted if the validity of the patent is sufficiently proven. Due to the principle of bifurcation between infringement and validity proceedings, a sufficiently proven validity should, in general, only be assumed if it has been confirmed at least in the first instance of opposition or nullity proceedings. Exceptions to this principle applied but have been handled restrictively.(1) The original examination decision of the patent office should not be sufficient (note the aforementioned statistic that only one-third of property rights are maintained without any limitations) .

Referral of 21st Chamber of Munich Regional Court

The above assessment was not shared by the 21st Chamber of the Munich Regional Court I(2) under then Presiding Judge Tobias Pichlmaier. Specifically, the Chamber had to decide on the issuance of a preliminary injunction on the basis of a patent that had been granted only a few weeks earlier.

Instead of issuing an order that would (arguably) have been overturned by the Munich Higher Regional Court, the Chamber took the proceedings as an opportunity to refer the following question to the European Court of Justice (ECJ) by way of a preliminary ruling pursuant to article 267 of the Treaty on the Functioning of the European Union by order of 19 January 2021:

Is it compatible with Article 9(1) of [Directive 2004/48] if German Higher Regional Courts (Oberlandesgerichte), which have jurisdiction at last instance in proceedings for interim relief, refuse, in principle, to grant interim measures for patent infringement if the validity of the patent in dispute has not been confirmed in opposition or invalidity proceedings at first instance?

Article 9(1) of the Enforcement Directive(3) obliges member states, among other things, to ensure that the competent courts may:

issue against the alleged infringer an interlocutory injunction intended to prevent any imminent infringement of an intellectual property right, or to forbid, on a provisional basis and subject, where appropriate, to a recurring penalty payment where provided for by national law, the continuation of the alleged infringements of that right, or to make such continuation subject to the lodging of guarantees intended to ensure the compensation of the rightholder.

According to the Chamber, this possibility does not exist if the higher regional courts, as last instance, consider it necessary to confirm the validity via opposition or nullity proceedings. The Chamber did not make the non-exhaustive exceptions defined by the higher regional courts the subject of the referral.

ECJ ruling

On the basis of the case law set out in the referral, the ECJ answered the question referred to it as follows:(4)

Article 9(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as precluding national case-law under which applications for interim relief for patent infringement must, in principle, be dismissed where the validity of the patent in question has not been confirmed, at the very least, by a decision given at first instance in opposition or invalidity proceedings.

Thus, the decision refers in principle to national case law under which, supposedly without exception, "the patent concerned may enjoy interim judicial protection only where the validity of that patent has been confirmed by a decision given at first instance in patent validity proceedings".(5)

However, the ECJ furthermore confirmed the view of the referring Chamber that:

European patents enjoy a presumption of validity from the date of publication of their grant. Thus, as from that date, those patents enjoy the full scope of the protection guaranteed, inter alia, by Directive 2004/48.(6)

The ECJ justified the fact that the patent proprietor's need for protection prevails in this respect by the fact that the defendant is adequately protected by the further provisions of article 9(5) to (7) of the Enforcement Directive – namely:

  • time limitation, insofar as no proceedings on the merits are instituted;
  • order of a security deposit; and
  • obligation of the applicant to pay damages.


The ECJ's decision does not change anything for patents when their validity has already been confirmed in opposition or nullity proceedings. Their validity was already considered sufficiently proven beforehand.

The decision is also unlikely to be relevant for owners of German utility models – these are granted without substantial examination that could justify any "presumption of validity".

However, the decision represents a landmark for owners of German and European patents for which validity has not yet been confirmed in opposition or nullity proceedings. The issuance of a preliminary injunction and thus a quick enforcement of rights should be more promising in the future after the ECJ's decision. At the same time, the filing of protective letters will no longer suffice if they merely refer to the fact that the respective patent has not yet prevailed in opposition or invalidity proceedings.

It remains to be seen what discretion infringement judges now have in injunction proceedings with regard to the validity of the respective patent. How far does the "presumption of validity" as stated by the ECJ extend? It is unclear whether the ECJ took into account the aforementioned statistical surveys on the outcome of the validity proceedings, but in the end, they are now irrelevant. Based on the one-third statistic, the "presumption of validity" could already be regarded as shaken if opposition or nullity proceedings are pending. Therefore, criticism of the decision is to be expected.

Primarily, the response of the – rather cautious – higher regional courts is highly anticipated.

For further information on this topic please contact Martin Hackler or Sebastian Ochs at Grünecker by telephone (+49 89 21 23 50) or email ([email protected]). The Grünecker website can be accessed at


(1) See:

  • OLG Karlsruhe, judgment of 23 September 2015 - 6 U 52/15 - Ausrüstungssatz;
  • OLG Munich, judgment of 12 December 2019 - 6 U 4009/19 - Elektrische Anschlussklemme; and
  • OLG Düsseldorf, judgment of 9 July 2021 – 2 U 4/21 – Cinacalcet III.

(2) Case ref 21 O 16782/20.

(3) Directive 2004/48/EC.

(4) Judgment of 28 April 2022, case C44/21.

(5) Para 33.

(6) Para 41.