Thursday, 1 September 2011

Sidestepping the Re-Dating - Late Filed Drawings

The 10th senate of the Bundespatentgericht (responsible for the more exotic cases) had to decide on a request to refund the examination fees paid for a german patent application (10 W (pat) 11/10).

In contrast to the examination fees at the EPO, the examination fees of the DPMA are due for the request, not for the actual examination work. As a consequence, a refund is only possible in cases of double payment or if the patent application was not pending when the payment was made (i.e. when the request was not validly filed with the payment.

In the case under dispute, none of the above circumstances was met. Rather, the office had found that drawings were missing (despite the fact that it had issued an acknowledgement of receipt mentioning the drawings) in the documents as originally filed and had requested the applicant to hand them in later. The consequence of late-filing of missing drawings in the German procedure is basically identical to the procedure of Rule 56 EPC: The application is re-dated. If the applicant does not want this, the references to the missing parts are deemed to be deleted.

The appellant in this case has found a rather elegant way to alleviate the painful effects of the re-dating. This is actually what I found interesting about this case: He did not hand in the missing documents for the original application but rather filed a second application claiming the priority of the first application and including the drawings. If it turns out that the drawings had been (or are deemed to have been) filed at the filing date of the first application, everything is fine. If not, the priority date is saved at least for the subject-matter contained in the first filing, which is not re-dated.

The appellant argued that all the trouble was caused by the DPMA having carelessly lost the drawings and that at least the examination fees for the first application (which is deemed to be withdrawn once a second German patent application claims its priority) should be reimbursed as a matter of fairness. However, the patent court contented itself with applying the patent law and did not grant the request.

I am wondering if there would be a civil claim to damages against the patent office DPMA?

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