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Generative AI: A global guide to key IP considerations
Artificial intelligence (AI) raises many intellectual property (IP) issues.
Global | Publication | 五月 2022
In German PI proceedings, the Higher Regional Courts are the final courts determining whether a PI can be granted, so uniform case law (which in main proceedings, on the merits, is established by the Federal Supreme Court) is not readily discernible.
However, over the years the Higher Regional Courts in Düsseldorf, Karlsruhe and most recently Munich - the three most important patent infringement appeal courts in Germany - were in rare agreement about PIs:
In considering whether to exercise their discretion in PI proceedings, some courts allowed, inter alia, exceptions to the general rule set out above – essentially requiring either a high danger of an irreparable harm, or rendering the validity of the patent at issue more reliable for other reasons. Such exceptions were as follows:
Despite such exceptions, successfully obtaining a PI has remained a significant challenge in Germany. Unless patent validity was not attacked by a third party, or none of the specific exceptions applied, then only main proceedings against infringers could be initiated.
Such difficulties have been particularly acute for patentees holding a recently granted patent, which - for obvious reasons - could not have undergone an opposition or nullity action. The situation was, therefore, unsatisfactory.
The Munich Regional Court had to decide a PI request where the patent at issue had been granted shortly before the request was filed. The judges:
The referral addressed the question to the ECJ as to whether the established German case law was in line with Article 9 of the Enforcement Directive 2004/48/EC (Directive). Article 9(1)(a) of the Directive obliges member states to ensure that judicial authorities may issue a PI against an alleged infringer to prevent any imminent infringement of an intellectual property right.
In its judgment, the ECJ decided that the German case law at issue contravened Article 9 of the Directive for the following reasons:
The ECJ judgment will encourage patentees to request more PIs and to test where the new limits for the grant of PIs are.
For highly innovative industries with quick product cycles, PIs are a potent tool, available again, so PIs are likely to be sought in situations where irreparable harm typically occurs: when new products are introduced on the German market or in the context of international trade fairs.
Now with a greater likelihood of becoming a target of requests for PIs, potential defendants will try to reduce the risk of a sales stop or the removal of exhibits on trade fairs, which are very damaging reputationally.
PIs can be granted very quickly, even within hours, on an ex parte basis (without a chance for the defendant to be heard). Though ex parte PIs are reserved for extraordinarily urgent situations, with an imminent threat of irreparable harm, potential defendants may well want to mitigate their risk by filing so-called “protective briefs”:
The ECJ decision has removed an important hurdle against granting PIs in German courts. Patent litigators will be interested to see how the different infringement courts now handle the increased discretion of judges in PI proceedings in the near future, with a view to determining which forum will be the most attractive for plaintiffs.
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