Cross appeal in nullity proceedings – FCJ X ZR 40/18

In its ruling of 4 August 2020 (Ref.: X ZR 40/18), the Federal Court of Justice (X. Civil Division) had to decide on the question of when a cross appeal in nullity proceedings is admissible under Sec. 115 (2) 2nd sentence of the Patent Act.

Facts

In the first instance proceedings before the Federal Patent Court, the plaintiff for a declaration of invalidity (hereinafter plaintiff) claimed that the subject-matter of the patent in suit was not patentable. The nullity defendant (hereinafter: defendant) defended the contested patent as granted and with four auxiliary requests as amended. The Patent Court upheld the patent in suit to the extent of the fourth alternative claim, and besides, declared the patent invalid and dismissed the remainder of the complaint.

The plaintiff had challenged that approach by appealing and pursued the objective of complete annulment. The defendant had not initially lodged an appeal. After the FCJ had received the statement of grounds of appeal, the presiding judge had ordered that the defendant be given the opportunity to respond to the statement of grounds of appeal by 20 May 2019. Upon request, the chairman of the senate extended this deadline twice, most recently until 05.07.2019. With the statement of defence of 4 July 2019, the defendant also filed a cross appeal against the judgement.

The plaintiff took the view that the cross appeal was inadmissible because, in the context of the order, the presiding judge had not instructed the defendant in accordance with Sec. 277 (2) German Code of Civil Procedure. Accordingly, there was no effective time limit under Sec. 115 (2) 2nd sentence of the Patent Act for filing a reply to the appeal, so that the two-month period under Sec. 115 (2) 1st sentence of the Patent Act was decisive for the filing of the cross appeal, which had already elapsed when the corresponding written statement was submitted.

Decision

The FCJ considered the cross appeal to be admissible and justified its decision in particular by stating that an instruction pursuant to Sec. 277 (2) of the German Code of Civil Procedure is not a prerequisite for setting a time limit for filing a reply to the appeal pursuant to Sec. 115 (2) 2nd sentence of the Patent Act. In its reasons for its decision, the FCJ referred to the chain of referrals based on Sec. 115 (3) 2nd sentence of the Patent Act. Sec. 115 (3) 2nd sentence of the Patent Act refers to Sec. 110 (8) of the Patent Act, which in turn refers to Sec. 521 (1) and (2) 1st sentence of the German Code of Civil Procedure. Thus, Sec. 110 (8) of the Patent Act but explicitly not refers to Sec. 521 (2) 2nd sentence of the German Code of Civil Procedure, according to which Sec. 277 German Code of Civil Procedure would have to be applied mutatis mutandis. There is thus a break in the referral chain, so that the decision of the FCJ is hardly surprising.

In addition, the FCJ states that failure to inform the defendant could at best result in the defendant being protected from legal disadvantages to which the information should draw attention. From this point of view alone, the plaintiff’s argumentation could not be accepted because it would have resulted in the defendant suffering a disadvantage due to the failure to inform the presiding judge. Moreover, this would not have been otherwise in the context of a cross appeal in civil proceedings. Although Sec. 524 German Code of Civil Procedure refers to Sec. 277 German Code of Civil Procedure by way of Sec. 521 (2) 2nd sentence of the German Code of Civil Procedure, the cross appeal would remain permissible without any time limit if the presiding judge in civil proceedings did not instruct the defendant sufficiently according to Sec. 277 (2) German Code of Civil Procedure.

 

Carsten Plaga

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