T 2052/10 – You Got It

Applicants sometimes believe that interlocutory revision opens the right to having the appeal fee reimbursed. This assumption will often prove false.

Following the refusal of its patent application, the applicant filed an appeal, submitted amended claims and requested reimbursement of the appeal fee. The Examining Division (ED) granted interlocutory revision on the basis of the amended claims. The applicant then again requested reimbursement of the appeal fee:

“Fortunately, in the matter of the above mentioned European patent application, appeal proceedings could be avoided, as the competent EPO ED now accepts the application documents as amended, which had been filed on March 2, 2010.

Therefore, we request that the appeal fee be reimbursed to our deposit account n° … kept at the EPO”

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The ED did not grant this request, nor does the Board of appeal:

(NB : all legal provisions refer to the EPC 1973)

*** Translated from the German ***

[2] Reimbursement of the appeal fee is ordered when the situation is such that the law requires reimbursement (gesetzlicher Rückzahlungstatbestand) (see J 3/09 [4.3]) or when the appeal fee has been paid without legal justification (ohne Rechtsgrund).

[2.1] Pursuant to R 67 reimbursement of appeal fees shall be ordered in the event of interlocutory revision if the reimbursement is equitable by reason of a substantial procedural violation.

[2.1.1] In the present case, the applicant has neither asserted nor proven that a substantial procedural violation occurred during the examination proceedings.

[2.1.2] The Board cannot see any such substantial procedural violation, either.

The decision was taken on the basis of the version of the claims filed with its letter of August 8, 2008. This version had been submitted and agreed upon by the applicant (A 113(2)), the right to be heard was granted and no requests had been overlooked. Therefore, the request for reimbursement cannot be granted.

[2.2] Also, the reason for reimbursement mentioned by the applicant, i.e. that the appeal proceedings could be avoided […] is not valid, because this is not a situation where the EPC provides for reimbursement (Rückzahlungstatbestand).

[2.3] Moreover, in the present case, there is also a legal justification for the payment of the appeal fee.

[2.3.1] Claim 1 on which the decision of the ED to refuse the grant of a patent had been based was significantly amended by the addition of the features of dependent claims when the appeal was filed.

Interlocutory revision was granted pursuant to A 109(1), on the basis of this amended claim 1 after the appeal had been filed.

[2.3.2] Pursuant to A 109(1), interlocutory revision presupposes that the department of the first instance whose decision is contested considers the appeal to be admissible and well-founded (see G 3/03 [3.3]).

This presupposes that the appeal fee has been paid, as pursuant to A 108 an appeal is only deemed to have been filed after the fee for appeal has been paid.

[2.3.3] In the present case, the ED which granted interlocutory revision necessarily had to consider the appeal filed, admissible and allowable before it could grant interlocutory revision.

Thus the appeal fee, without which, as seen above, interlocutory revision would not have been possible, has not been paid without legal justification.

[2.4] As the EPC does not provide for reimbursement in situations other than [the situation referred to in] R 67 (see [2.1] above), the request for reimbursement cannot be granted.

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