Which party bears the legal costs in nullity proceedings if the disputed patent is declared invalid? The German Federal Court of Justice (FCJ) dealt with this question in its decision X ZR 59/21 - Anzeigemonitor. In accordance with Section 91 of the German Code of Civil Procedure (ZPO), the unsuccessful party must bear the legal costs. However, if the defendant has not given cause for the action and immediately acknowledges the claim of the opposing party ("immediate acknowledgement"), the legal costs of the proceedings can be imposed on the nullity plaintiff pursuant to Sec. 93 ZPO, even if the nullity plaintiff prevails.
In the present case, the FCJ held that the requirements of Sec. 93 ZPO were met. In particular, the defense of the patent in limited form in conjunction with the waiver of any additional protection exceeding this limitation for the past was considered to be an immediate acknowledgement within the meaning of Sec. 93 ZPO. In its reasoning, the FCJ concluded that the plaintiff should have requested the patent proprietor to surrender the patent prior to the commencement of the proceedings in order to have cause for a nullity action. As a result, the nullity plaintiff was ordered to pay the legal costs, but only in part, as the patent proprietor had only partially acknowledged the plaintiff's claim by defending the patent in a limited manner.
It is therefore evident that the immediate acknowledgement pursuant to Sec. 93 ZPO can play an important role in the litigation tactics of both nullity plaintiffs and patent proprietors. "Particularly from the perspective of the nullity plaintiff, the FCJ decision underlines the importance of requesting a pre-litigation waiver," says Dr. Maximilian Nöth from Cohausz & Florack. "By doing so, the nullity plaintiff can avoid the risk that the patent proprietor does not give cause for a nullity action and that he - the nullity plaintiff - will have to bear the legal costs of the proceedings."
>> Download judgment (machine translation)
Picture credits: Gorodenkoff_AdobeStock.com
