Federal Supreme Court clarifies appeal fees

On September 19 2017 the Federal Supreme Court issued a decision (X ZB 1/17) which resolved a common stumbling block for where a German protective right (eg, a patent, utility model, trademark or design patent) has more than one applicant or more than one counterparty (eg, opponent) challenging the right.

The decision clarified the question of how many appeal fees must be paid by appellants (applicants or counterparties) where a decision of the German Patent and Trademark Office (DPMA) is challenged by a Federal Patent Court appeal.

It is often assumed that only one appeal fee must be paid, considering the fact that applicants and counterparties each pay a fee (eg, a filing fee and an opposition fee, respectively) when starting the grant procedure and opposition procedure, respectively. However, under the Patent Costs Law, one appeal fee must be paid for each appellant: “fee numbers 400,000 to 401,300 are charged separately for each applicant (appellant)“.

Normally, if two appellants file an appeal without indicating in the appeal documents which appellant the paid fee applied to, both appeals are dismissed (except in rare cases where the appellants can prove to the DPMA that they were connected under company law, forming a so-called ‘civil law company‘).

However, the Federal Supreme Court considered such dismissals to be too harsh. Therefore, in the present case it granted one of the appeals – namely, that of the appellant that the DPMA mentioned first in the judgment title (rubrum) – and dismissed the other.

As well as streamlining the appeals procedure, the decision gives the appellant with the dismissed appeal the freedom to assist the other appellant.