Friday 30 June 2023

Good news for patent holders: Presumption of validity of a European patent rises like a Phoenix

"A national procedure aimed at the immediate termination of an infringement would be ineffective and would disregard the objective of a high level of protection of intellectual property, if the application of that procedure were subject to a confirmation of  validity in first instance opposition or invalidity proceedings. European patents enjoy a presumption of validity from the date of publication of their grant. As from that date, those patents enjoy the full scope of protection."

Good news for patent holders: Presumption of validity of a European patent rises like a Phoenix and annihilates the requirement of additional validity decisions

In its judgement Phoenix Contact v. Harting (C-44/21) of the 28th of April 2022, the European Court of Justice of the European Union (“CJEU”) examined the interplay between interlocutory injunctions / interim measures for patent infringement and the validity of European patents. The Court established that a presumption of validity applies to European patents when interim relief is sought against an alleged patent infringer, and that national (case)law cannot impose that the patent in question is confirmed by a decision given in opposition or invalidity proceedings.

Background

Phoenix, the holder of a European patent for a plug connector, filed a claim for interim relief at the Regional Court of Munich seeking an injunction to stop Harting from infringing its patent.

Shortly after, Harting started opposition proceedings against the patent at the EPO.

After analysing Phoenix’ claim, the Court concluded that Phoenix’ patent was valid and Harting was indeed infringing upon it.

However, established case-law precluded the Court from granting interim measures against Harting since according to this case-law interim measures could only be granted if the validity of the patent concerned had been confirmed by a decision of the EPO (in opposition proceedings) or by the competent German patent court (in invalidity proceedings).

The Court questioned whether this case-law was in accordance with the Enforcement Directive[1] according to which the competent national court may issue provisional measures in order to prevent any imminent infringement of an intellectual property right.

Therefore the Regional Court of Munich referred the matter to the European Court of Justice for a preliminary ruling.

 

Preliminary ruling of the CJEU

The European Court of Justice swipes away the established case-law under which applications for interim measures for patent infringement could only be obtained where the validity of the patent in question had been confirmed in first instance opposition or invalidity proceedings.

According to the European Court of Justice, the Enforcement Directive imposes on the Member States to provide the possibility that the competent national court grants an interlocutory injunction to terminate immediately a patent infringement without awaiting a decision on the merits.

Provisional measures are particularly justified where any delay would cause irreparable harm to the holder of such a right. Thus, the ‘time’ factor is of particular importance for the purposes of effective enforcement of intellectual property rights.

A national procedure aimed at the immediate termination of an infringement would be ineffective and would disregard the objective of a high level of protection of intellectual property, if the application of that procedure were subject to a confirmation of  validity in first instance opposition or invalidity proceedings.

European patents enjoy a presumption of validity from the date of publication of their grant. As from that date, those patents enjoy the full scope of protection.

As regards the risk that the defendant in the proceedings against whom the interlocutory injunction is granted, may suffer harm as a result of the interim measures, the Enforcement Directive requires the national courts to offer guarantees that interim proceedings are not abused. Applicants for provisional measures are obliged, within a reasonable rather short period,  to institute proceedings on the merits of the case. Moreover, such provisional measures may be made subject to lodging a security by the applicant to ensure compensation for any prejudice suffered by the defendant. Lastly, the applicant may be ordered to pay appropriate compensation to the defendant for an injury caused by those provisional measures.[2]

Consequently, the European Court of Justice forces the national courts to change their established case-law if it is based on an interpretation of national law that is incompatible with the objectives of a European directive.

 

Conclusion

In conclusion, the European Court of Justice emphasises once more the objective of a high level of protection of intellectual property and clearly states that a European patents enjoys a presumption of validity and the full scope of protection from the date of grant.

 

30 June 2023

CAPE IP Law

 

[1] 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

[2] Article 9(5) – (7) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property