J 0028/86 (Container) of 13.4.1987

Summary of Facts and Submissions

I. Patent application No. 83 109 109.5 was filed on 15 September 1983 together with a request for examination.

II. In a communication dated 11 September 1984 the authorised legal practitioner was advised that although a written request for examination had been received the examination fee had not yet been paid.

III. In response the legal practioner withdrew the request for examination filed with the application, stating that he reserved the right to file the request again within the time limit, when he would also pay the fee.

IV. In a letter dated 14 December 1984 patent agent Dr Pöhner informed the EPO that he had taken over as representative for the applicants and submitted their written authorisation.

V. In a letter dated 29 January 1985 the new representative was advised that he was not a professional representative before the EPO and that the authorisation filed was therefore invalid.

VI. In a letter dated 21 February 1985 the new representative again filed the request for examination and paid the fee of DEM 2 120.

VII. On 3 July 1985 the European Patent Office gave a decision refusing a request from the patent agent to be recorded in the European Patent Register as representative for European patent application No. 83 109 109.5.

VIII. In a letter dated 13 December 1985 the new representative asked for the examination fee to be refunded.

IX. The Head of Formalities refused that request in a decision dated 2 May 1986. The new representative, who has in the meantime been entered on the list of professional representatives, appealed against this decision, with a view to prosecuting further his request for refund of the examination fee.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.

2. The request for refund of the examination fee is justified if there were no legal grounds for paying the DEM 2 120. This presupposes that the amount was paid for an invalid request for examination.

3. Although the request for examination filed together with the patent application was made in writing in the request for grant of a European patent, it never acquired validity.

4. Under Article 94(2), second sentence, EPC a request for examination is not deemed to be filed until after the examination fee has been paid. The request for examination filed with the application was therefore deemed not to have been filed because the examination fee had not been paid. Before the examination fee was paid by the new representative, the applicants' previous representative withdrew the request.

5. That withdrawal was valid. Article 94(2), third sentence, EPC, which provides that a request for examination may not be withdrawn, does not detract from its validity, because that provision applies to valid requests for examination, and in order to be valid the examination fee must have been paid. It does not prohibit withdrawal of requests which under the Convention are deemed not to have been filed. The intention behind Article 94(2), third sentence, EPC is to prevent examination proceedings which have been validly set in motion from being stopped by withdrawal of the request for examination. It would make no sense to apply this provision to requests for examination which under the Convention are deemed not to have been filed, since no examination proceedings ensue from such requests. If, therefore, the above article does not apply to requests for examination deemed not to have been filed, such requests may be withdrawn.

6. In practice it is probably rare for a request for examination deemed not to have been filed under Article 94(2), second sentence, EPC to be withdrawn, but such a step is not without significance. By withdrawing such a request the applicant can ensure that his request for examination made in the request for grant form cannot be validated by virtue of the examination fee being paid by a third party and that as a result examination proceedings cannot be set in motion against the applicant's wishes.

7. Since the request for examination filed with the application was validly withdrawn, it could not be validated by virtue of the examination fee being paid at a later stage by the applicants' new representative.

8. The request for examination filed again by the new representative in the letter dated 21 February 1985 was invalid on this date. The applicants' new representative, a German patent agent, was not at the time entered on the list of professional representatives. Under Ariticle 134(1) EPC, however, professional representation of natural or legal persons in proceedings established by the European Patent Convention may only be undertaken by professional representatives whose names appear on the list maintained for this purpose by the European Patent Office.

9. Consequently, the DEM 2 120 paid when the request for examination was filed was for an invalid request. The EPO therefore has no legal justification for withholding this amount.

10. Nor is the situation changed by the fact that the new representative was later entered on the list of professional representatives. In this capacity he neither approved nor resubmitted the invalid request he made earlier. On the contrary, he insisted on a refund. The refund of DEM 2 120 is therefore justified.

11. Reimbursement of the appeal fee is ordered, because the appeal is allowed and the reimbursement is equitable by reason of a substantial procedural violation, i.e. the incorrect application of Article 94(2) EPC.

ORDER

For these reasons, it is decided that:

1. The decision of the Head of Formalities dated 2 May 1986 is set aside.

2. Reimbursement of the amount of DEM 2 120 and of the appeal fee is ordered.