Tobias Hahn, a Partner at ROKH explains how to make the most of preliminary injunction proceedings in Germany.
Preliminary injunction proceedings in patent infringement matters are well-established, very effective and therefore frequently used in Germany, in particular but not exclusively in pharmaceutical matters. They allow for quickly obtaining an enforceable injunction even in technically complex matters and are therefore a powerful tool, also against parties not yet present but about to enter the German market. Even ex parte injunctions are possible, mainly in trade fair matters, being available within only a few days – or even hours in very urgent cases – after filing. Further, German procedural law provides for the possibility of forum shopping, so that depending on the individual facts of the case it needs to be evaluated which venue provides for the best chances of success.
Requirements Under German procedural law the applicant needs to establish prima facie evidence for infringement, validity and urgency of the matter. In addition, the court will weigh the interests of both parties, so the applicant should also bring forward any arguments as to why the infringing acts are particularly harmful for their business.
Regarding the question of urgency, the applicant has to show that it only recently took notice of the infringing products. While there is no statutory time limit and the requirements vary between courts, as a rule of thumb, the request for preliminary injunction should be filed within one month of the patentee learning about the infringing actions of the respondent. If arguments can be presented to the court why more time was needed, such as for examining a potentially infringing device or involving an expert, the courts are, however, willing to accept longer time lines. In this regard, the courts do not require the patentee to react as soon as possible, but within a reasonable timeframe.1 Further, case law does not require the patentee to constantly monitor the market for infringing products. However, the patentee may not ignore clear indications that its patent is infringed.2 In practice, it is extremely
important to quickly take all measures that are necessary for further evaluation as soon as notice is taken of (potentially) infringing acts, and particularly to thoroughly document the measures that were taken so that this information can be made available in the proceedings. In addition, the patentee should immediately contact its attorney for assessment, choice of the best court and timely filing of an application for preliminary injunction. Request a free trial to read more.