Tuesday, December 29, 2015 J 0007/13 - Everything gets more expensive, including divisionals

You can't blame the applicant for trying, but of course the EPO charges the most recent fees for a divisional filing, not the fees that had to be paid at the filing date of the earlier application, as explained in detail by the Legal Board of Appeal in the current case. It is a matter of interpretation because the law lacks an explicit outline that a divisional might encounter higher filing and search fees. Although G 3/98 concerned Art 55 EPC, the Board in this case indicates that it should be viewed in a broader sense than only in relation to Art 55 EPC. Moreover, the filing fees serve the purpose of the filing requirements (submitted documents, etc.), not the substantive prior art issues that relate to the fictitious filing date from the earlier application (or even the priority filing).

Summary of Facts and Submissions

I. European patent application No. 11 004 301.5 was received at the EPO on 25 May 2011. It was filed as a divisional of European patent application No. 03 746 402.1 (the earlier/parent application), which had been filed on 3 April 2003.

II. Together with the application documents, the EPO received Form 1010 listing the fees to be debited in respect of the divisional application from the account of the applicant's representative. The amount of the search fee was given as 800 euro. An accompanying letter contained the explicit instruction that, if any of the amounts indicated in the form were wrong, the right amounts were to be debited from the account.

III. With a communication dated 20 July 2011 the applicant was informed that the correct amount of the search fee payable in the present case was 1105 euro, so that an additional 305 euro would be debited from the representative's account. It was further set a two-month time limit for filing reasoned objections to that finding.

IV. By fax dated 28 July 2011 the applicant did so, arguing that "since the filing date of the present application is 3 April 2003, the correct amount of the European search fee is 800 EURO" and requesting either a refund or an appealable decision.

Tuesday, November 03, 2015 J 22/14 - Back and forth in the register

Can the legal division correct a transfer recorded in the register, if it later doubts the transfer was legal? In this unusual set of circumstances a transfer of a patent application is contested by the parties. We will refer to the parties as the appellant and the respondent.

Originally, a direct European patent application was filed in the name of the respondent.  About 5 years later, the same representative filed a request to transfer the application from the name of the respondent to that of the appellant. As proof of the transfer selected pages of an Assignment Agreement were filed. 

Just over a year later, a request is filed with the legal division to revert the transfer. It is argued that filing only selected pages of the agreement is not sufficient and that authorizations were both lacking and not substantiated. The request is accompanied with an injunction of a Kantonsgerichts in Zug that purportedly proved that the agreement was signed for the respondent by someone who was not authorized to do so.

The legal division reverts the transfer because there is no national (court) decision that the transfer was valid.  (Bis zum Nachweis einer entsprechenden nationalen Entscheidung is daher der Rechtsübergang nicht i.S.v. Regel 22 EPÜ hinreichend nachgewiesen.)

The appellant requests an appealable decision and subsequently appeals it. The board reverts the decision of the legal division, and reverts the reversion.

Similar decisions between the same parties were made for patent applications in J 16/14, J 21/14, J 20/14, J 17/14, and for patents in J 18/14, J 19/14.