Germany: German Court Grants Preliminary Injunction Despite "Invalid" Patent

Last Updated: 11 August 2008
Article by Andreas von Falck and Florian Gerhardt

For the first time in history, a German court has awarded a preliminary injunction in circumstances where the patent in suit had previously been revoked by the German Federal Patents Court. In its landmark decision10, the Appellate Court of Dusseldorf enjoined a generic company from manufacturing and distributing a generic version of the patented anti-schizophrenia medication olanzapine.


The German patent law system divides proceedings concerning the validity of patents from infringement proceedings. While the Federal Patents Court and, in second (and last) instance, the Federal Supreme Court examines the validity of patents, the assessment of infringement cases is assigned to the District Courts, the regional Appellate Courts and, in the final instance, to the Federal Supreme Court. According to the previous case law, if the Federal Patents Court has revoked a patent, infringement proceedings with respect to the patent are stayed until the final decision as to the validity by the Federal Supreme Court. Applications for preliminary injunctions are rejected if the underlying patent has been revoked, because the matter is considered not to be suitable for preliminary injunction proceedings in those circumstances. However, according to the recent decision of the Dusseldorf Appellate Court, this should be handled differently in certain circumstances.

Facts of the case

In the case assessed by the Dusseldorf Appellate Court, the patent holder was a research based pharmaceutical company which had invested substantial amounts of money and done research for more than 20 years in order to find a new medication for the treatment of schizophrenia, before finally discovering the patented drug substance. The substance's International Nonproprietary Name (INN) is olanzapine. The corresponding product, Zyprexa®, is one of the best selling anti-schizophrenia medications.

In nullity proceedings initiated by two generic companies, the Federal Patents Court had held the invention to be not novel and thus not patentable. This was despite the fact that the cited prior art document (a test report) did not show or even mention olanzapine. However, in the opinion of the Federal Patents Court, olanzapine could be (in accordance with case law of the Federal Supreme Court) "read between the lines" of the document because it was a "neighbouring" substance to some of the substances examined and referred to in the test report. The patentee appealed the decision, and the case is yet to be heard by the Federal Supreme Court.

Following the first instance revocation of the patent, generic companies started manufacturing and selling competitive olanzapine-containing products. As the patentee strongly believed that the decision of the Federal Patents Court was wrong, and in order to protect one of its most important products, it applied for a preliminary injunction at the Dusseldorf District Court. However, the District Court rejected the application. It stated that, after the decision of the Federal Supreme Court, severe doubts as to the validity of the patent existed. In its view, an infringement court could assess the validity on its own only in exceptional cases, for example if the nullity judgment gave no grounds for the revocation.

The Dusseldorf Appellate Court's judgment

The Appellate Court repealed the District Court's decision and granted the preliminary injunction. It held that in circumstances where the judgment of the Federal Supreme Court was evidently wrong and the infringement court was capable of assessing the technical facts on its own, (that is, without extensive expert evidence), constitutional law demanded it to do so. It pointed out that in such a situation, effective legal protection was required since the term of a patent was limited by statute. The patent holder would be deprived of its rights if it was denied a preliminary injunction or if the proceedings were stayed. It would even be an ultimate deprivation if, as in this case, the appeal decision on the validity could not be expected before the term of the patent ended. The alternative of relying on main proceedings starting only after the Federal Supreme Court had reinstated the patent (in this case not likely until after the patent had expired) was not acceptable.

When examining the nullity decision, the Appellate Court said it could determine "with certainty" that the decision was wrong. The patented substance could not be "read between the lines" of the citation. The court said:

  • At the time of the publication, the exact mechanisms of the effect of antipsychotics were widely unknown. Instead, one had to rely on "trial and error". Therefore, predictions of the efficacy of untested substances were hardly possible
  • The citation recommended a certain substituent that did not exist in the patented active ingredient. For a citation to be novelty-depriving, there must be a concrete pointer to the patented substance. This was not the case.


The decision gives hope to a variety of pharmaceutical companies that have suffered from an extreme broad application of the novelty test to chemical patents by the Federal Patents Court. In the future, in cases where the decision of the Federal Patents Court is evidently wrong, technically skilled courts like the Dusseldorf courts will examine more carefully the nullity decision and the cited documents of prior art. This applies to both proceedings for a preliminary injunction and proceedings on the merits. It is fair to say, however, that the "evidently wrong" threshold will be hard (but not impossible) to meet. Lovells acted for the patentee.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions