All material subject to strictly enforced copyright laws. © 2022 Managing IP is part of the Euromoney Institutional Investor PLC group.

Can third parties access files in nullity proceedings?

Sponsored by maiwald-logo-cropped.PNG
Stack file folders with documents on background

In the present case (X ZR 14/20), the German Federal Court of Justice again dealt with the question to what extent a third party who is not party to the nullity proceedings should be granted access to the files of the nullity proceedings.

If a party is targeted with an infringement action, the validity of the patent in suit is usually targeted with a parallel nullity action. In this case, the pleadings from the infringement proceedings are usually also introduced into the nullity proceedings in order to inform the nullity senate about the interpretation of the claim features discussed in the parallel infringement proceedings and to prevent diverging interpretations as far as possible.

Pursuant to Section 99 paragraph 3 of the German Patent Law (PatG), anyone may request inspection of the files of nullity proceedings. Only in circumstances where the patent proprietor can demonstrate a conflicting interest can inspection of the files be restricted or refused. Moreover, the third party does not have to show a legitimate interest in the inspection of the files. As the German Federal Court of Justice states, this means in practice that the inspection of the files of the nullity proceedings is basically freely available.

On the other hand, according to Section 299 paragraph 2 of the German Code of Civil Procedure (ZPO), a third party may only be granted access to the files of the infringement proceedings if the third party can substantiate a legal interest. Such a legal interest may, for example, be that the third party requires information in order to pursue its own rights or to defend itself against claims.

In the present case, the question therefore arose for the German Federal Court of Justice whether, in light of the stricter provision of Section 299 paragraph 2 of the ZPO, the inspection of files in nullity proceedings is to be restricted or whether the stricter standards of Section 299 paragraph 2 ZPO are also to be applied to the inspection of files in nullity proceedings. In other words, whether a third party should also receive the pleadings from the parallel infringement proceedings without further ado within the framework of the inspection of the files in the invalidity proceedings.

As was to be expected, the German Federal Court of Justice answered this question to the effect that inspection of the files in nullity proceedings is subject to the rules of Section 99 paragraph 3 PatG and that no stricter requirements have been or are indicated here.

Therefore, only those documents are to be excluded from the inspection of files in the nullity proceedings, with regard to which the parties to the nullity proceedings can substantiate an opposing interest worthy of protection. Such a conflicting interest may arise, for example, from the fact that the documents contain detailed explanations of the business relationships of the parties involved (cf. also BGH, GRUR 1972, 441, 442 – Inspection of files IX). In any case, it is not sufficient to point out that the subject matter of the proceedings in infringement proceedings is subject to the provisions of Section 299 paragraph 2 of the German Code of Civil Procedure.

In practice, the parties should therefore be aware that a third party could obtain inspection of the infringement proceedings by way of the inspection of files in the invalidity proceedings. As this is partly already common practice, it is therefore advisable to separate certain factual issues in the infringement proceedings and to state them in different parts of the pleadings. In this case, it is possible to file only the parts of the pleadings relevant for the nullity proceedings in the nullity proceedings.

More from across our site

In-house and private practice counsel say UK judges have raised the bar for preliminary injunction requests
António Campinos will serve another five years as EPO president – perhaps he’ll calm unrest at the office in that time
LGBTQ IP lawyers say using rainbow colours and posting solidarity messages on social media must be followed by concrete action
Brand owners bemoan counterfeiters’ latest wheeze and say enforcement authorities should get more involved
Counsel at Bayer, Novartis, a generics company and other firms debate what the WTO’s patent waiver will mean in the short and long term
The patent office report found that stakeholders were still divided over subject matter eligibility but broadly wanted clarity
The UKIPO published the results of its consultation on AI and IP today, June 28, and plans to shake up the rules on copyright and data
IP consultancy Brandit is the first European intellectual property firm to announce plans for an augmented-reality presence
Patent owners and implementers weigh in on the PTAB Reform Act – its provisions, what it missed and its likelihood of success
Counsel from Blackbird, Unified Patents, two other companies and a law firm debate what new ways to avoid Fintiv mean for petitioners and patent owners
We use cookies to provide a personalized site experience.
By continuing to use & browse the site you agree to our Privacy Policy.
I agree