Tuesday, 10 December 2013

T 2134/12 – Just Keep It

In this case the Examining Division (ED) granted interlocutory revision and then sent the case to the Board of appeal for a decision on reimbursement of the appeal fee. So far so good. There was only one problem – the appellant had never asked to be reimbursed.

*** Translation of the German original ***
[1] Pursuant to R 103(2) the department whose decision is impugned shall order the reimbursement if it revises its decision and considers reimbursement equitable by reason of a substantial procedural violation. In all other cases, matters of reimbursement shall be decided by the Board of appeal.

[2] R 103(2) codifies the case law of the Legal Board of appeal (J 32/95) in respect of R 67 EPC 1973 (see explanations to the Implementing Regulations, Special edition  n°1, OJ EPO 1999, 713). This case law has been confirmed by the Enlarged Board of appeal  in its decision G 3/03. Accordingly, the first instance department which revises its decision has to examine whether the conditions for a reimbursement of the appeal fee have been satisfied, irrespective of whether the appellant has indeed made such a request. If the department reaches the conclusion that the conditions for a reimbursement have not been satisfied, it cannot order the reimbursement of the appeal fee and it does not have to deal with the question of reimbursement of the appeal fee in its decision pursuant to A 109(1). According to the case law the appellant is not adversely affected by such a decision (G 3/03 [3]). If reimbursement has been requested, then the department considering that the conditions for reimbursement have not been satisfied is not entitled to dismiss the request. Rather, it has to remit the request to the Boards of appeal (G 3/03 [3.4, 4]).

[3] In the present case neither the notice of appeal dated July 11, 2012, nor the statement of grounds of appeal dated August 8, 2012, contain a request for reimbursement of the appeal fee. Nor does the file contain anything indicating that such a request was made at a later stage. According to the case law cited above the ED, therefore, should not have remitted the case to the Board in order to have a decision on the reimbursement of the appeal fee. Pursuant to R 103(2) the ED was indeed obliged to examine whether it considered the requirements for a reimbursement of the appeal fee to have been met. As the ED denied this and as there had not been any request for reimbursement, there was no need for a corresponding statement in the communication dated October 5, 2012. However, the deficient statement in the communication cannot be understood to be a decision refusing [reimbursement], because the ED was not entitled to decide [on that matter]. Once the decision had been revised by the ED, and as a consequence of the fact that no request for reimbursement had been filed together with the appeal, there was no pending matter (verfahrensanhängiger Gegenstand) on which the Board had to take a separate decision (cf. T 242/05 [2.1-3]). The decision having been revised on July 11, 2012, the appeal proceedings were no longer pending (T 242/05 [2.3]). Consequently the remittal to the Board which had been ordered by the ED on October 1, 2012, in order to have a decision on the reimbursement of the appeal fee is not based on a procedural matter (Verfahrensgegenstand) which could have been entrusted to the Board. In view of these facts the Board has to order a remittal of the case to the remitting ED (see in this context T 242/05 [2.3-4] and T 1703/12 [3,4]; although in the present case the ED does not have to decide on the admissibility of a request for reimbursement of the appeal fee that had been filed after the revision of the appealed decision, the termination of the grant proceedings is within the competence of the ED). […]

The case is remitted to the first instance.

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

The file wrapper can be found here.


Myshkin said...

Looking at the "Processing of an appeal" form in the electronic file, I wonder whether the ED felt obliged to cross at least one of the two boxes ("Die Rückzahlung wird angeordnet" versus "Dem Antrag kann nicht stattgegeben werden").

A third box might help ("Kein Antrag auf Rückzahlung").