Friday, 7 January 2011

T 1284/09 – Payback Revisited

When an opponent and its legal successor both file appeals against the decision of the Opposition Division (OD), and later on withdraw the appeals, will the EPO reimburse at least one of the appeal fees?

In the present case, the OD rejected the opposition - against a patent concerning bandages containing maggot secretions (!) - on March 30, 2009. On June 8, the opponent (Bro Morgannwg NHS Trust) filed an appeal. On the very same day, another company (Zoobiotic Ltd.), which declared itself to be the “opposition assignee”, also filed an appeal. On July 31, 2009, both appellants filed identical statements of grounds of appeal. On August 5, 2010, both appellants withdrew their appeals and requested reimbursement of the appeal fee “to the extent possible”.

*** Translated from the German ***

[3] The appellants have not given any reason why one or both appeal fees should be reimbursed. The Board does not see any such reason.

[4] As the appeal proceedings were initiated only after the entry into force of the EPC 2000, A 108 in its revised version is to be applied. Thus for the reimbursement of the appeal fee, R 103 EPC 2000 is to be applied instead of R 67 EPC 1973 […].

[5] Boards of appeal order the reimbursement of the appeal fee if:

(i) the appeal is deemed not to have been filed pursuant A 108, second sentence, because the appeal fee has not been paid in due time,

(ii) interlocutory revision is granted or when the Boards of appeal deem an appeal to be allowable and such reimbursement is equitable by reason of a substantial procedural violation (R 103(1)(a)), or

(iii) the appeal is withdrawn before the filing of the statement of ground of appeal and before the period for filing that statement has expired (R 103(1)(b)).

[6] None of these alternatives applies here:

As the appeal fees have been paid in due time, this is no situation according to (i).

The appeals were withdrawn before the Boards had the possibility of deeming them allowable. There was no possibility of interlocutory revision in opposition appeal proceedings (A 109(1), second sentence). Thus reimbursement under (ii) is excluded as well.

The appeals were withdrawn after the time limit for filing the statements of grounds of appeal had expired and after the filing of those statements. Therefore, reimbursement under R 103(1)(b) (point (iii) above) is not an option either.

When a situation does not correspond to R 103(1)(b), the (full or partial) reimbursement of the appeal fee cannot be triggered by a withdrawal of the appeal ( R 103(1)(b) e contrario; T 372/99, T 1142/04 ; T 1216/04).

[7] Reimbursement of fees is also ordered when there has been a payment without legal justification (ohne Rechtsgrund), e.g. when a payment has been made by error or when too high an amount has been paid (cf. Article 12 RRF e contrario […]).

[8] Appellants I and II both filed an appeal against the same decision of the OD and both paid one appeal fee. Even if the appeals were directed against the same decision and if one appeal was filed by the original opponent and the other by a possible successor, in the case of two appeals two appeal fees become due (G 2/04 [3.2.5(a)]). The filings and the payments were made before the time limit under A 108, first sentence, together with R 126(2) […] had expired. Therefore, the payment of two appeal fees had become due and there was no payment without legal justification.

[9] As a consequence, the request for reimbursement of the appeal fees cannot be granted.

Should you wish to download the whole decision (in German), just click here.

To have a look at the file wrapper, click here.