Thursday, 7 November 2013

T 972/10 – Oops! I Paid It Again

This is a revocation appeal.

The Opposition Division (OD) had posted the decision revoking the opposed patent on March 11, 2010.

The patent proprietor filed an appeal and paid the appeal fee on April 30, 2011.

It then filed a written submission entitled “correction of appeal” on May 4, and paid two further appeal fees (on May 3 and May 5).

*** Translation of the German original ***

[1.1] On April 30, 2010, the [patent proprietor] filed a notice of appeal dated April 28, 2010, in which it requested that the decision of the OD dated March 11, 2010, to revoke European patent n° 1 281 918 be set aside and that “said patent [be] revoked in its entirety”.

[1.2] A subsequent written submission dated May 4, 2010, received on May 6, 2010, is entitled as “correction of appeal” and contains the request that the impugned decision be set aside and, under point 2, that “said patent [be] maintained in its entirety”. This request also corresponds to the request made in the statement of grounds of appeal dated July 6, 2010, which was received on July 8, 2010.

[1.2] The Board understands the sequence of written submissions such that the only purpose of the written submission of the [patent proprietor] of May 4/6, 2010, was to replace the request which had been formulated in the first notice of appeal but which was obviously erroneous (because it was directed at the revocation of the patent which had been revoked by the OD in the impugned decision) […] and not to file a second appeal.

[1.4] As a consequence, the Board is of the opinion that there is only one appeal by the patent proprietor, whose main request has been corrected within the time limit for filing an appeal pursuant to A 108, first sentence.

[1.5] Insofar as the appellant has paid the appeal fee several times (according to the file, there have been payments of 1180 on April 30, May 3, and May 5), there have been excess payments which have no cause in law and, consequently, have to be reimbursed.

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

The file wrapper can be found here.


Linda said...

As an aside, I remember a patent firm bringing a case into the European regional phase twice. They of course got one set of fees back subsequently, but one wonders whether they could have pursued both European applications.

Anonymous said...


The EPO knows only one application: the PCT application. After 31 months the PCT can be "treated as a European application" but it remains the same application. The Form 1200 mentions the number of the PCT application, so EPO will necessarily see that 2 requests for entry were filed for the same original application.