T 1066/08 – Persuasion Is Not For Free

The present decision deals with a rather unusual request for reimbursement of the appeal fee. It is the problem rather than the response by the Board that has attracted my attention.

The Examining Division (ED) had refused a patent application for lack of inventive step. The decision was based in particular on documents D4 and D5. The applicant filed an appeal. The Board introduced documents D7 and D8 into the proceedings and expressed its opinion that claim 1 did not involve an inventive step in view of these documents. The applicant was summoned to oral proceedings (OPs).

The applicant then sent the following letter to the Board:

In response to the summons to OPs pursuant R 115(1) […] the request for OPs is withdrawn.

By [introducing] documents D7 and D8, the Board has convinced the applicant […] that the present application is not patentable within the meaning of the EPC. Documents D7 and D8 clearly corroborate the point of view of the EPO.

If the EPO had produced these documents already during the examination proceedings, the applicant […] would not have filed the appeal. Therefore, the impugned decision of the ED was insufficiently reasoned.

Thus the [applicant] requests reimbursement of the appeal fee and, for all other matters, withdraws the appeal.

Unsurprisingly, the Board rejects this request:

** Translation from the German **

[V] R 67, first sentence, EPC 1973 reads as follows:

The reimbursement of appeal fees shall be ordered in the event of interlocutory revision or where the Board of appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

In the present case interlocutory revision has not been granted. As the appeal, apart from the request for reimbursement of the appeal fee, has been withdrawn, the Board cannot possibly take a decision allowing the appeal. Therefore, a reimbursement of the appeal fee is not possible based on the wording of R 67, first sentence. Moreover, the Board does not see any other legal justification (rechtlicher Gesichtspunkt) for a reimbursement.

In this context, the Board would like to point out that a possible wrong assessment by the first instance cannot constitute a substantial procedural violation.

[3] Therefore, the request for reimbursement of the appeal fee is to be dismissed.

To read the whole decision, please click here.