Saturday, 2 April 2011

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”
(click to enlarge)

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.

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

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


Myshkin said...

I wonder about the legal status of the "decision on interlocutory revision" of 24.09.2010.

In the decision on interlocutory revision of 24.03.2010, neither box for dealing with the request for reimbursement was checked. The ED had obviously overlooked the request. This omission was "corrected" in the decision of 24.09.2010.

The "decision" of 24.09.2010 cannot be a second decision on interlocutory revision. A first decision can only be set aside following an appeal, and the decision of 24.03.2010 has not been appealed.

The "decision" of 24.09.2010 might be a decision to correct the decision of 24.03.2010 on the basis of Rule 140 EPC. However, overlooking a request is not an obvious mistake that can be corrected under Rule 140 EPC, since it concerns the substance of the decision rather than the form (G 8/95, point 3.3 and see also G 1/97, point 2(c)). (On the other hand, I guess that even if the requirements of Rule 140 EPC are not met, a decision to correct has legal force as long as it is not set aside in appeal, and in this case it was not (and could not have been) appealed.)

The "decision" of 24.09.2010 could also be seen as a (first) decision on the request for reimbursement only, given that the decision of 24.03.2010 failed to consider that request. However, in that case the decision was taken too late, see T 778/06. After the expiry of the 3-month time limit of Art. 109(2) EPC the ED is no longer competent to decide.

So what I think is that the ED in its decision of 24.03.2010 only decided to grant interlocutory revision. Since it failed to decide on the request for reimbursement within the time limit of Art. 109(2) EPC, this request was remitted to the Board by operation of law. If this view is correct, the "decision" of 24.09.2010 was merely a communication for informational purposes.