Germany: Third party interventions to ex parte proceedings
In a decision (BGH X ZB 4/14, "Verdickerpolymer II"), the German Federal Court of Justice (BGH) has resolved the question of third party interventions to ex parte proceedings. The BGH found that there is no legal basis for third party interventions to ex parte proceedings of the patent proprietor requesting reinstatement even when the third party is sued for infringement of the patent in suit.
The German part of European patent EP 682 094, maintained in amended form after opposition proceedings, lapsed in Germany because the proprietor failed to pay the publication fee and provide a German translation of the amended patent within the legal deadlines. The patent proprietor requested reinstatement and a third party being sued for infringement of the patent in suit requested intervention to the reinstatement proceedings.
Section 59(2) PatG provides a legal basis for third party interventions to inter-partes opposition proceedings in the case of pending infringement or declaratory proceedings. Section 44(2) PatG explicitly excludes third party interventions to ex-parte grant proceedings.
The BGH found that the lack of a provision concerning a third party intervention to ex-parte proceedings if the third party is sued for infringement of the patent in suit is not considered as an unplanned legal loophole. The restrictive character of the provisions for third party interventions indicates a conclusive nature that cannot be generalised. It is emphasised that reinstatement proceedings are ancillary proceedings conducted in the course of main proceedings and if third party interventions to main proceedings are only allowed under exceptional circumstances similar hurdles must apply for associated ancillary proceedings.
With respect to decision BGH X ZB 26/70 "Hopfenextrakt", wherein an opponent was allowed to participate in reinstatement proceedings, it is emphasised that this decision has been issued under the previous law and is based on the prerequisite that opposition proceedings are conducted as part of grant proceedings. The decision is not considered applicable when opposition proceedings and grant proceedings are independent from each other.
It has been clarified that a third party intervention to ancillary proceedings is only allowable if the third party is involved in the corresponding main proceedings. Furthermore, the existing provisions on third party interventions are considered conclusive.