Two proprietors - two appeal fees - BGH Mauersteinsatz

The decision "Mauersteinsatz" X ZR 3/14  relates to the appeal of two proprietors co-owning a patent which had been revoked in an opposition procedure.  The appeal had been lodged "in the name and on behalf of the patentees" by the common representative of the proprietors along with the payment of only one appeal fee of EUR 500.

The Bundespatentgericht rejected the appeal as inadmissible because the statutory rules require the payment of one appeal fee per appellant - i.e. two appeal fees in this case.  According to the German law, the co-proprietors are considered as an "association by fractions" (Bruchteilsgemeinschaft) rather than an association under civil rights (GbR) which could have been considered as one single party.

The BGH found that in a constellation like this - where the fundamental right to judicial protection is at stake - the Bundespatentgericht should have tried to allocate the appeal fee to one of the appellants in order to avoid unacceptable hardship, wherein no strict standard should be applied.  In the case at issue, it turned out that the payment form showed the name of only one the appelants such that the appeal of the latter was considered admissible and the appeal of its co-applicant was rejected.

Entitlement to use a patent does not foreclose the right to file an oppstion

The federal supreme court has decided in the case X ZB 33/08 (Deformationsfeder) that an  to the inventor's institution has the right to file an opposition against this patent even if the inventor has made an appointment with the applicant granting an entitlement of use for this institution.

The appointment does not imply a no-challenge obligation binding the institution as a third party such that the filing of an opposition does not in general violate the principle of good faith. This finding could change if it would turn out that the institution has functioned as a straw-man for the inventor who is, in general, not entitled to file an opposition against his invention.

The applicability of this reasoning to EPC opposions is not immediate. Interesting points arise from a comparison of this decision with G03/97 and OJ EPO 1992, 747, where the Technical/Enlarged Board of appeal emphasizes that contractual claims are in general subject to national jurisdiction.