Germany: Why Torpedos have backfired

Last Updated: 25 November 2003

by Reinhardt Schuster and Clemens Rübel

A recent decision by the Hamburg District Court may end the controversial practice of taking patent cases to courts of EU countries with slow procedures.

In former years, the so-called "Italian" or "Belgian Torpedo" enjoyed rising notoriety among practitioners as a defense strategy against potential patent infringement suits in Germany. The term torpedo designates a negative declaratory action to establish non-infringement, mostly filed in certain EU countries such as Italy or Belgium, the judicial systems of which take much more time to reach a legally effective decision than in other countries, for example, Germany. Art. 24 of the Hague Convention - on which the decision of the Hamburg District Court that will be discussed in this article was partly based - served for a long time as the basis for blocking claims to injunctions for a time span of a number of years or sometimes even until the end of the life time of the patent-in-suit. By this maneuver, the torpedo-plaintiff is buying time, during which the company can market its potentially infringing product without being obstructed by property rights of third parties. An infringer would thus be gaining a competitive advantage against the patent owner, who needs to regain the expenses spent for the development of his product. In case the infringer looses the suit years later in Italy or Belgium, there is a good chance that he merely will have to pay damages to the patent owner, which will not be much higher than a reasonable license fee for utilization of the patent-in-suit (for which the patent owner might not have granted him a license voluntarily).

Such a case of an "Italien Torpedo" was subject to the above mentioned suit "Seifenverpackung" (soap packaging) at the Hamburg District Court (published in German in GRUR Int. 2002, p. 1025). The defendant in this action had sued in Milan for declaration of non-infringement by its product of, inter alia, the German part of a European patent. The plaintiff in Germany now requested a preliminary injunction at the Hamburg District Court which was swiftly issued.

In the grounds, the Court stated that the negative declaratory action in Milan had the same subject matter as the present preliminary procedure and that, for this reason, according to Art. 21 Hague Convention (today applicable for all EU countries except Denmark: Art 27, Council Regulation (EC) No. 44/2001 on jurisdiction and the recognition of enforcement of judgements in civil and commercial matters, hereinafter referred to as CR 44/2001), it was not possible to instigate a main action on the merits in Germany, since the Court which was addressed later has to declare its non-competence vis-a-vis the Court which was called upon first.

Different to German procedural law, the Hague Convention assumes an equal ranking of negative and positive declaratory actions. A negative declaratory action filed earlier in another EU country takes precedence over a later filed action in Germany.

However, the District Court Hamburg decided, that on the basis of Art. 24 Hague Convention (today: Art. 31, CR 44/2001), nothing contravenes to the issuance of a preliminary injunction and that the Court is internationally competent. The essential purpose of Art. 24 Hague Convention is to prevent parallel suits before the courts of multiple member states as well as any potentially resulting contradictory decisions. A further aim is to exclude the possibility that a decision according to Art. 27(3) (new version: Art. 34(3), CR 44, 2001) is not recognized because of it being incompatible with a decision that has been rendered concerning the same parties in the state in which the claim to admission is raised. This danger of contradicting decisions, however, does not exist with preliminary injunctions which are merely preliminary rulings until the decision in the main suit is rendered.

After the Hamburg District Court had established its competence in this manner, it had to decide on the infringement and find out whether there were sufficient grounds to issue a preliminary injunction. With preliminary proceedings, there is always the problem for the court that the legal situation cannot be examined in great detail. In many cases, the defendant is also raising a nullity action or an opposition against the patent. The result of these parallel actions cannot be awaited in the preliminary procedure; only a prognosis can be given as to their chances for success. For this reason, the court has to balance the interests of the parties: It has to weigh up the interest of the plaintiff in a swift decision against the interest of the defendant, who, in case of a false decision in the preliminary procedure, would be subjected to substantial disadvantage. The larger the positive clarity of the court's view on the infringement and validity of the patent, the more reason it has for giving preference to the interest of the plaintiff.

It is an interesting aspect of the decision of the Hamburg District Court that, in the framework of weighing this balance of interests to the disadvantage of the defendant, it took into consideration that a torpedo was pending in another EU state. With this, the Hamburg District Court is confirming a former ruling of the Düsseldorf District Court (published in german inGRUR 2000, 692 ff. - "Kontrastmittel"), according to which the interest of a patentee in a preliminary injunction is getting stronger, the longer he has to wait for a decision in the main suit. The Düsseldorf Court comments: "Already the latter legal aspect is pointing toward the direction that, in case of conflict, urgency is to be affirmed." In other words: While a torpedo in itself may not constitute a reason for a preliminary injunction, it carries considerable weight in the balancing of interests and thus leads, in controversial cases, to a sentence of the opponent to the claim, in particular, in cases when the possibility of an imminent filing for an action for performance (compensation) would lead to a rejection of the claim for a preliminary injunction.

The present decision gives reason to rethink the practice of instigating torpedo actions. This tactic was developed at a time when it was commonly understood to be practically impossible to get a preliminary injunction in patent matters. The legal and factual circumstance of patent cases were deemed to be too complex to be examined in depth in an accelerated procedure, in particular, if the validity of the patent was challenged. This assessment is no longer valid today. Over the time, the requirements with respect to the patent-in-suit have progressively diminished to the advantage of the plaintiff. With regard to the validity of the patent-in-suit, the Hamburg District Court is only speaking of "the revocation of the patent being imminent with a high degree of probability." For the attorney of the defendant in the preliminary procedure, this results in an enormous increase of the requirements for demonstrating the invalidity of the attacked patent, in comparison to the general opinion of some decades ago that the validity of a patent must be "beyond any doubt".

Consequently, a torpedo may prevent the instigation of a main suit in Germany, but the owner of the patent is almost forced to claim as quickly as possible a preliminary injunction against the torpedo-plaintiff and potential infringer, because if the patent owner is waiting longer than one or a few months (depending on the court), then the chances for the issuance of a preliminary injunction will rapidly decrease, since the patent owner is demonstrating that he is not diligent in enforcing his rights and, therefore, an accelerated procedure will not seem necessary in the eyes of the court. The torpedo plaintiff is thus confronted very quickly with an accelerated procedure in the country he intended to "block" and in which he is in a disadvantageous position legally as well as psychologically: torpedos are instigated in order to prevent a law suit in Germany which one fears to loose , and are therefore, so to speak, a sign of bad conscience.

For this reason it is questionable whether torpedos still make sense. While it is still true that in an accelerated procedure, the chances of the patent owner are smaller than in a main suit, the danger of a preliminary injunction is increasing. It has to be taken into consideration that in the torpedo brief, information may be disclosed which can be used to the disadvantage of the defendant in the German preliminary injunction procedure. Additionally, there is the danger, that in cases in which the deadline for the instigation of an accelerated procedure has already lapsed, a preliminary injunction could still be issued, because the torpedo has brought about a change of circumstance, reviving "urgency". However, this question has not yet been definitely resolved by the higher instance courts.

From the torpedo-plaintiff's point of view, notwithstanding the considerable costs of a long drawn-out procedure in Italy or Belgium, the consequences of a preliminary injunction in Germany (the chances of which have been increased by the torpedo), are now more drastic: A preliminary injunction is only a preliminary decision and is only effective until a non-preliminary, main action has been decided with the same subject matter between the same parties. Since a main action in Germany is prevented by the Belgian or Italian torpedo, the preliminary injunction remains valid until the torpedo is decided. And this can take years.

Thus, the tables are turning. The defendant in the torpedo suit now has all the time in the world and will try to delay the procedure as long as possible - in order to maintain the effects of the preliminary injunction proceedings as long as possible - as the torpedo plaintiff would have done, if it would not have come to the injunction against him, in order to prevent a main action in German as long as possible. In this sense, the torpedo has indeed backfired.

© by Reinhardt Schuster and Clemens Rübel 2003. This article was first published in Managing Intellectual Property July/August 2003.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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