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The decision "Mauersteinsatz" X ZR 3/14  relates to the appeal of two proprietors co-owning a patent which had been revoked in an opposition procedure.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.

Patentee+Patentee=Two Appeal Fees

In the case on which the decision 10W (Pat) 17/14 of the German Bundespatentgericht is based, two legal entities co-owning the patent had commonly filed an appeal against the decision of the opposition division and paid only one appeal fee.

According to earlier decisions of other senates of the the Bundespatentgericht, this had been considered sufficient because co-owners of a patent were considered mandatorily joint parties (notwendige Streitgenossen) in a legal sense. After all, they are obliged to perform procedural steps jointly.

According to the 10th Senate, this is not sufficient to qualify the co-owning patentees as a single party. According to law, the fees have to be paid for “for each Appellant” (für jeden Antragsteller).
Subsequent attempts of the patentee to argue that the actually formed single legal entity for the purpose of prosecuting the patent from the onset have not been successful. The same holds for the attempt to subsequently allocate the appeal fee to one of the patentees. It has to be unambiguously clear which parties are parties of the appeal procedure at the time limit to file the appeal.

The appeal was deemed to be not filed.

Standard of Due Care in Patent Prosecution Matters

The 10th Senate of the Bundespatentgericht, responsible i.a. for appeals against decisions to refuse a request for re-instatement of rights in patent prosecution matters has raised interesting questions on the standard of due diligence in our field.

In general civil law, the rule established by the case-law is that the exercise of due care by the responsible attorney requires that upon deleting a time limit for one procedural step, the attorney should also check that other inter-related time limits in the same file are correctly noted.

In an earlier decision (10 W[Pat] 5/05 “Dreidimensionale Daten”, headnote here), the Senate had argued that this rule can be transferred to cases of  re-instatement of rights in patent prosecution matters only in certain parts.

The rule applies in particular for time limits pertaining to legal remedies such as appeals, wherein a longer delay for filing the grounds of appeal is considered to be interrelated with the delay for filing a statement of appeal. Failure to check the correct notation of the delay for filing the grounds upon deleting the delay for filing the statement of appeal is generally considered incompatible with due diligence.

However, the 10th Senate of the Bundespantentgericht had found that this requirement cannot be extended to each and every delay in a patent application procedure, where the number of more or less independent delays is considerably higher than in a general civil procedure.

In the case “Dreidimensionale Daten”, both a translation of the documents as originally filed and a copy of the priority document had to be filed within the pertinent delays respectively. When filing the translation, the attorney had not remarked, that the deadline for filing the priority document had not been correctly noted, and the DPMA had rejected the request for re-instatement by arguing that the obstacle (failure to note the time limit) would have been remarked at this earlier stage if the responsible attorney had exercised all due care required by the circumstances.

The Bundespatentgericht did not follow this argument by pointing out that a causal relationship between the two limits does not exist, and that the number of delays to be monitored in patent application procedures is considerably higher than in general procedures for legal remedies.

In the recent decision 10 W (pat) 22/09, this question has come up again. The Senate points out that a limited duty (“eingeschränkte Pflicht”) exists to check a file with regard to the correctness of calculations done upon noting the delays according to his  instructions. The reason is that the high number of delays to be noted and monitored would lead to excessive requirements. According to the senate , the attorney should be exempted from activities in relation to the deadline-management and checking in the interest of his activities dedicated to the administration of justice (“im Interesse seiner der Rechtspflege gewidmeten Tätigkeit”).

The question which kind of specific indications ("Anhaltspunkte") are sufficient to trigger the duty to double-check the noted deadlines is still to be clarified. In the case at issue in 10 W (pat) 22/09, this threshold finds its organisational counterpart in the question which degree of irregularities in the normal process flow should give rise to a duty of office clerks to notify the responsible attorney.

As this point of law has not yet been clarified by the highest courts, a leave to appeal on this point of law was granted.