FUJIFILM v Kodak (CFI, UPC_CFI_355/2023, ORD_7103/2024, 21 February 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By procedural order of 21 February 2024 (UPC_CFI_355/2023, App_6926/2024), the presiding judge of the Düsseldorf Local Division, acting as judge-rapporteur, retrospectively extended to 7 February 2024 the time limit for Kodak’s counterclaims for revocation of FUJIFILM’s EP 3 594 009, and rejected the claimant’s request for a decision by default. According to the headnotes, a counterclaim for revocation is only validly filed through the dedicated CMS workflow, even where it is contained in the statement of defence. The time limit for that filing may nonetheless be extended retrospectively under Rule 9.3(a) RoP on certain conditions.

Question

Is a counterclaim for revocation that is contained in a timely statement of defence, but not filed through the CMS workflow before the deadline, out of time, and may its time limit be extended retrospectively?

Decision

Since parties must use the official forms, a counterclaim is only properly filed once it has gone through the CMS workflow. The failed upload being within the defendants’ own sphere, the counterclaim was not filed in time. A retrospective extension is nonetheless possible where the statement of defence was filed in time, a first attempt at the workflow filing was made before the deadline and the upload followed without culpable delay. Those conditions were met: the unredacted statement of defence, containing the counterclaim, had been filed in time, a redacted version not being required even with a Rule 262A application, and the internal error caused a delay of only one day. A decision by default and rejection of the counterclaims were therefore excluded. FUJIFILM’s time limits were extended to 15 April 2024 with the defendants’ agreement.

Key points for practice

• A counterclaim for revocation must be filed through its own CMS workflow, in addition to being included in the statement of defence (headnote 1).
• A retrospective extension remains available where a filing attempt was made before the deadline and the defect is cured without culpable delay (headnote 2).

Provisions applied

Rules of Procedure

Rules 4.1, 9.3, 25.1, 262A, 277 and 355.1

Case law cited

Düsseldorf Local Division, 15 February 2024 (referenced as « UPC_CFI_8414/2024 »), Munich Local Division, 3 October 2023, UPC_CFI_9/2023, Mannheim Local Division, 19 February 2024, UPC_CFI_365/2023

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.