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The decision "Mauersteinsatz" X ZR 3/14  relates to the appeal of two proprietors co-owning a patent which had been revoked in an opposition procedure.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

No Refund of DPMA Examination Fee

In the case X ZB 11/13, the applicant had requested the refund of the examination fee for an application which had been deemed to be withdrawn when the examination hand not been started.

The BGH discusses various possible claims for refund of the examination fees including the constitution and comes to the conclusion that no statutory basis for the refund exists. In contrast to the examination fees of EPO, the examination fees are considered to be fees for formally initiating the examination procedure and not linked to any actual service being carried out.

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.

Nullity - refund for expenses of accompanying attorney at law

There is a recent tendency questionning the refund of expenses of an accompanying attorney at law in a nullity procedure at the German Patent Court (Bundespatentgericht) by the underlying party. Nullity procedures in Germany are in most cases conducted by a patent attorney who ist accompanied by an attorney at law as a support for legal questions, in particular of more procedural nature.

The former (before 2005) used to grant a refund of the expenses due to this "double-representation" by the underlying party. In the last years, the Supreme Court (BGH) emphasized that the claim for this refund of expenses has to be examined on a case-by-case basis, wherein this examination has to remain cursory in order to account for the difficulties in predicting the legal problems which might arise during the procedure. In cases where legal difficulties are very unlikely, a further representative with higher legal qualification may not be necessary such that the costs therefore would not be refunded (see e.g. BPatG
GRUR 2008, 735).


In a recent decision, the 5th senate of the Bundespatentgericht has back-pedalled a little by ruling that an accompanying attorney-at-law is always adequate in cases where an infringement procedure is co-pending for headnote (in german) see here)