Dr. Jörg Prechtel

For Practitioners

29.03.2018

The German Federal Supreme Court (BGH) defuses a stumbling block in their new decision X ZB 1/17 (catchword “Mehrschichtlager”) of September 19, 2017.

- The Problem:

A German protective right (patent, utility model, trademark, design patent) with more than one applicant or more than one counterparty (e.g. opponent) attacking the respective protective right

guess:

How many appeal fees have to be paid by the appellants (applicants or counterparties) if a decision of the German Patent and Trademark Office is to be attacked by an appeal filed with the German Federal Patent Court?

One might assume that only one appeal fee has to be paid considering the fact that the applicants and counterparties respectively have only paid one fee, e.g. filing fee and opposition fee, respectively, when starting the grant procedure and opposition procedure, respectively. 

Therefore, from time to time appellants only pay one appeal fee. However, it is prescribed by law that for each appellant one appeal fee has to be paid*.

Consequences of paying less than the prescribed number of appeal fees by mistake:

- Situation before the new decision:

In case that for example two appellants have filed the appeal without indicating in the appeal documents for which of the appellants the fee has been paid, normally** both appeals were dismissed.

This consequence was considered too harsh by the German Federal Supreme Court in the above-mentioned decision.

- Situation after the new decision:

In the mentioned case one appeal is admitted, namely that appeal of that appellant which is mentioned 1st in the head (Rubrum) of the decision in question by the German Patent and Trademark Office. The other appeal is dismissed.

This situation is now much better than before because the appeal procedure can start. The appellant with the dismissed appeal is free to assist the other appellant.

(published, IAM International reports 28.03.2018, http://www.iam-media.com

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* Patent Costs Law, Fee Schedule B (1) "Fee numbers 400 000 to 401 300 are charged separately for each applicant (appellant)”

**Only in the rare case that the appellants can prove based on documents available to the German Patent and Trademark Office that they are connected under company law forming the so-called “Gesellschaft bürgerlichen Rechts”.

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