This article was first published on the IP Magazine and has been co-written by Andrew Bowler, Rachel Mumby and Vossius partners Andreas Kramer and Thure Schubert.
Patents are exclusive rights, meaning that they give the patent holder the right to exclude others from using the claimed invention. Whilst injunctions are often granted following a finding of infringement, there is no guarantee that this will happen. Different countries across Europe analyse whether to grant an injunction in different ways. In this article we compare the approach in England and in Germany.
Underlying the assessment across the EU (and the UK at least for now) is the IP Enforcement Directive which states that remedies should be “effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse”.
The English approach
In England, injunctions are an equitable remedy, meaning that the courts should only grant an injunction where it is “just and convenient to do so”, and otherwise should order damages.
The English courts have long been reluctant to refuse a prohibitory injunction. This is in all disciplines, not just patents. However, there are further considerations in the context of patents. One consideration is the requirement of “proportionality” in the Enforcement Directive. Jacob LJ held in Vestergaard v Bestnet, that he considered conventional English law principles to embody this concept. However, as in HTC v Nokia, the infringer may need to show that the effect of an injunction would be “grossly disproportionate” before an injunction is refused.
A key consideration, across all areas of technology, is that to deny an injunction is effectively to impose a compulsory licence. This has been considered, for example, in the lifesciences sector in Chiron v Organon, Biogen v Medeva and most recently in Evalve v Edwards Lifesciences and in the telecoms field in HTC v Nokia. The principle concern is that there are statutory requirements for obtaining a compulsory licence, which would be circumvented if damages are awarded in lieu of an injunction. For example, the statutory compulsory licence regime requires (amongst other things) that applications can only be made at least 3 years after patent grant, that demand for the patented product is not being met, and that the patentee has refused to grant a licence on reasonable terms. Further, if an injunction is to be refused then there are numerous additional questions which need to be dealt with, such as how compensation should be calculated and what other terms should be incorporated into this “licence”.
Whilst cases where final injunctions for patent infringement are refused are therefore rare, one example of such a case is Napp v Dr Reddy’s  Here, following the requirements of the Enforcement Directive, it was held that an injunction would be disproportionate (whilst not de minimis, the scale of infringement was deemed to be so small that it was indistinguishable from harm caused by non-infringing acts) and a barrier to legitimate trade (the effect of the injunction would have been to require the defendant to operate even further outside the boundaries of the claim, thus effectively extending the scope of the patent). This can be contrasted with springboard cases, such as Dyson v Hoover, where an injunction is extended beyond patent expiry in order to put the patentee back into the position it would have been had pre-expiry infringements not taken place.
Another area of debate in recent years has been in the context of life-saving medicines or devices, where the public interest is raised as a reason for the court to use its discretion to refuse, stay or reduce the scope of an injunction (the argument being that patients will die, or suffer serious health issues if the injunction is granted). Most recently, in Evalve v Edwards Lifesciences, it was held that the public interest may justify a refusal or carve‑out from an injunction, but also that the patent system as a whole is already criss-crossed with provisions which strike balances between different public interests (e.g. exclusions from patentability for methods of medical treatment) and the courts should not seek to override this unnecessarily. Ultimately, the court did grant the injunction in Evalve despite there being clinically tangible differences between the products of the two parties and evidence that some doctors considered the infringer’s product to be preferable to the patentee’s. This means that, to date, the English court has never (to the authors’ knowledge) denied an injunction for patent infringement on public interest grounds, though in some cases there have been carve outs. This, of course, may be that in cases where the grant of an injunction would be sufficiently disproportionate, the patentee decides themselves not to seek the injunction, if only for public relations reasons.
The German approach
Automatic injunctions have been the long-established rule in Germany, codified in Section 139 para 1 of the German Patent Act. This means that the German courts in principle have no discretion to refuse injunctions in case of patent infringement. Other factors, such as the parties’ interests and the public interest, are generally not considered by the courts. Although German law generally recognises the principle of proportionality, this principle is not explicitly stipulated in section 139 para 1 of the German Patent Act relating to injunctive relief, which means that prohibitive injunctions will be granted automatically in Germany. While measures based on equitable considerations do exist and may be applied, they are deferred to a later procedural stage, namely the enforcement of the judgment. Such measures to prevent the enforcement of an injunction (based on the principle proportionality) are provided for on the basis of the applicable procedural law, e.g. the motion to prevent enforcement (Sec. 712 Code of German Civil Procedure), the motion to provisional stay of enforcement (Sec. 709, 719 Code of Civil Procedure) as well as the mandatory security deposit by a plaintiff before a first instance judgment can be enforced (Sec. 709 Code of Civil Procedure). Procedural means such as these are also the reason why the German legislator considered that the German patent system already sufficiently takes the proportionality considerations, as set forth in the IP Enforcement Directive, into account. Still, such measures to prevent or stay the enforcement of a judgment are very rarely successful in practice and, if at all, limited to very extreme cases.
Nevertheless, the German Bundesgerichtshof (Federal Court of Justice) addressed the question of proportionality in its 2016 Waermetauscher (Heat Exchanger) decision, explicitly acknowledging that patent injunctions can also be subject to substantive proportionality considerations. Even though the Court in this case still decided to grant the injunction against the infringer, in its obiter dictum it mentioned use-by (grace) periods as an example of a suitable means to avoid disproportionate consequences for an infringer.
Despite the Waermetauscher decision, the German District and Appeal Courts have been reluctant to generally apply proportionality considerations. These have also been rarely raised by defendants in a substantive manner. In most cases so far, disproportionality has been raised in connection with procedural means (as discussed above) against the enforcement of judgments granting injunctive relief.
The real challenge to the automatic injunction rule came quite recently, when a series of lawsuits was brought by the holders of standard essential patents (SEPs) against the automotive industry regarding vehicles implementing SEPs in the field of mobile communication. This triggered more far reaching and well lobbied discussions as to whether in the day and age of the ‘internet of things’ it would still be proportionate to automatically enjoin and block products that necessarily have to apply various technical standards.
Against this background, at the beginning of this year, the German Ministry of Justice tabled a draft Act for modernising the German Patent Act (“Draft Act”). The Draft Act contains inter alia a proposal to include the following wording into Section 139 para 1 German Patent Act, which mirrors the wording of the Waermetauscher decision of the Federal Court of Justice:
“The [injunction] claim is excluded to the extent that the enforcement of the right to an injunction is disproportionate because, due to special circumstances taking into account the interest of the patentee towards the infringer and the requirements of good faith, it constitutes a hardship not justified by the exclusive right.”
The German Ministry of Justice, citing the Waermetauscher decision, argues in its explanatory memorandum that the proposed draft is a mere “legislative clarification” and that “the enforcement of a claim for injunctive relief may be disproportionate in exceptional cases only”, however, it also makes clear that “the injunction claim could also be excluded temporarily or permanently if granting the injunction would constitute an unreasonable hardship for the infringer”. It is important to note that, according to the draft act, there is no intent to change the status quo on the automatic injunction, but to equip the patent system with potential means to deal with cases on the “advancing digitization and the increasing technological complexity of products”.
Of course, before this proposal can be implemented and become new law, it will be subject to an already ongoing and highly controversial debate. Ultimately, the authors expect that the automatic injunction regime will remain unchanged. Only in rare and exceptional cases, where the infringer will be able to demonstrate an unreasonable hardship, will the principles as set forth in the Waermetauscher decision and now clarified by the Draft Act apply. This seems appropriate and very much in line with the English approach, as proportionality exceptions could otherwise potentially undermine the stricter requirements of the statutory compulsory licence, e.g. the public interest public requirement (Section 24 para 1 No 2 German Patent Act) as well as the requirement that the licence seeker must have been unsuccessful at negotiating a license with the patentee for a reasonable period of time (Section 24 para 1 No 1 German Patent Act). Although there have been only a few cases in recent years where infringers have attempted to exclude an injunction claim in the context of a compulsory licence based on public or third-party interest proportionality considerations, the German courts have not granted those requests as a defence against claims for injunctive relief. This means, that while proportionality does exist in German patent law, the thresholds to successfully invoke them as a defence in infringement proceedings remain absolutely high.
The authors look forward to seeing how the proportionality requirements develop in Germany in light of the proposed new law and whether the English approach will change post-Brexit. However, it seems likely that injunctions are here to stay and only in unusual circumstances will they be refused.
 This article considers so-called “final injunctions” rather than interim injunctions pending trial.
 Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights
 In addition, TRIPS (Agreement on Trade-Related Aspects of Intellectual Property Rights, Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization (15 April 1994)) provides that a patent confers certain exclusive rights but that there may be limited exceptions to these exclusive rights “provided that such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties.”
 Section 37(1), Senior Courts Act 1981
 ibid, Section 50
 So called “mandatory injunctions” are more rarely granted.
 See Shelfer v City of London Electric Lighting  1 Ch 287 and later Coventry v Lawrence  UKSC 13
 Vestergaard Frandsen A/S v Bestnet Europe Ltd  EWCA Civ 424 (in the context of breach of confidence)
 HTC Corporation v Nokia Corporation  EWHC 3778 (Pat)
 Chiron Corporation and others v Organon Teknika Limited (No. 10)  F.S.R.
 Biogen Inc v Medeva Plc  R.P.C. 475
 Evalve Inc v Edwards Lifesciences Ltd  EWHC 513 (Pat)
 Napp Pharmaceutical Holdings Ltd v Dr Reddy’s Laboratories (UK) Ltd  EWHC 1517 (Pat)
 Dyson Appliances v Hoover Ltd  R.P.C 27
 Subject to an agreed carve-out to allow the infringer’s product to be used in patients where the patentee’s product had failed.
 Merck Sharp & Dohme v Ono Pharmaceutical  EWHC 2973 (Pat) and GlaxoSmithKline UK Ltd v Wyeth Holdings LLC  EWHC 1045 (Ch) may be such cases
 English translation of Section 139 para 1 German Patent Act available at; <http://www.gesetze-im-internet.de/englisch_patg/englisch_patg.html#p0761>
 Federal Court of Justice, 10 May 2016 (X ZR 114/13) – Heat exchanger
 Federal Court of Justice, 10 May 2016 (X ZR 114/13) – Heat exchanger
 See for example the Munich District Court judgment of June 13, 2019 – docket no.: 7 O 10261/18
 The Draft Act is available at: <https://www.bmjv.de/SharedDocs/Gesetzgebungsverfahren/Dokumente/DiskE_2_PatMoG.pdf;jsessionid=858DB6B030882E8FAFE29CF972FC43CE.2_cid297?__blob=publicationFile&v=1>
 ibid on pages 50- 53.
 ibid on pages 50- 53.
 Exemplary, see Regional Court of Düsseldorf (Judgment of March 9, 2017, docket: 4a O 137/15 – Heart Valves (“Herzklappen”)