If a patentee undertakes actions with respect to a patent of the same patent family (e.g. waiving the parent patent of a divisional patent), this is often negatively characterised as playing the “Divisional Game”. We don’t want to go into the details of this but rather focus on the impact of such actions on a request for a preliminary injunction (“PI”). Two Appeal Courts in Germany have dealt with such a scenario and came to different conclusions. While the Munich Appeal Court generally seems more open to assume an abusive behavior (speaking against the grant of a PI), the Düsseldorf Appeal Court focuses on the timing of such strategic actions.
Assume a parent patent, which survived opposition proceedings before the EPO. Patentee then decides to waive the parent patent during the course of the opposition appeal proceedings. In the meantime, a divisional patent is granted. Said divisional is asserted in PI proceedings against a competitor.
In our case, two PI requests have been filed successively: one before the positive EPO decision regarding the divisional patent (unsuccessful) and one after said EPO decision (successful).
In both proceedings, the competitor argued that the Plaintiff is not entitled to a PI due to an alleged abusive behavior. It is accused of withdrawing the parent patent and not waiting for the outcome of the appeal thereon, but rather creating uncertainty by asserting the divisional. The view of the Courts differed with respect to this issue. Here is an overview:
View of the Munich Appeal Court
The Munich Appeal Court (Oberlandesgericht) confirmed the dismissal of the first request for a PI following the negative first instance decision (docket nos. 7 O 17693/17 and 6 W 184/18). The Court critically took into account that the parent patent was no longer defended so that there was no decision thereon in the opposition appeal proceedings. It assumed a risk that the parent patent could have been revoked on appeal, which would also have influenced the “value” of the divisional. In this regard the Court questioned that a patent covering a blockbuster product would be dropped. Therefore, these circumstances were taken into consideration when deciding not to grant a PI.
View of the Higher Regional Court Düsseldorf
Following the first instance grant of the second PI request, the Düsseldorf Appeal Court recently confirmed this decision (docket nos. 4c O 22/19 and I-2 U 28/19). In its grounds, it explicitly negated an abusive behavior with the following argumentation:
Generally, an abusive behavior could be taken into consideration in the overall weighing of interests. However, in the case at hand, this could not be determined in view of the timing of the waiver:
- In case a parent or parallel patent is waived after a negative preliminary opinion of the competent panel, the secured validity of the asserted patent would generally have to be denied. The reason for this would be the indication of the lacking validity and not so much a tactical maneuver.
- In case a parent or parallel patent is waived before a preliminary opinion of the respective panel, one can only speculate about the reasons for doing so. For instance, one may assume that the patentee has negatively assessed its chances of success. However, a subjective assessment/fear cannot be sufficient to refuse a PI (if there is a positive validity decision regarding the asserted patent).
As no preliminary opinion had been issued in the validity appeal proceedings regarding the parent patent at the time of its waiver, abusive behavior (or lacking assumption of validity) could not be assumed.
It is hard to provide a definitive answer to the question in the title. It seems like some German Courts may be more of a “spoilsport” than others, so the risk depends on which Court is seized for a PI and how case law develops respectively. Provided that “divisional games” could be an issue when applying for a PI, the case law outlined above may make the Munich forum less attractive for patentees for now. In any case though, timing matters before the Düsseldorf Courts. It remains decisive that the validity of the asserted patent is sufficiently secured and not “damaged” by a possibly negative assessment regarding a parent patent.