No reimbursement of DPMA examination fees

If an applicant for a patent has filed an examination request and paid the examination fee, they have no entitlement to reimbursement of this fee if they later withdraw the patent application or if the application is deemed to be withdrawn. This also applies if the patent office has not yet commenced examination of the application.

A patent applicant filed a patent application with the DPMA on 05.05.2008 for a "Compact heating centre" and simultaneously filed an examination request. With the application, the applicant authorised the DPMA to collect by direct debit the amounts due for the filing fee (EUR 60) and the examination fee (EUR 350), which took place on 23.5.2008.

For a further patent application filed on 13.05.2008, the patent applicant claimed priority of the application from 05.05.2008 with effect from 23.05.2008. In a letter also received by the DPMA on 23.05.2008, the patent applicant declared the withdrawal of the application from 05.05.2008 and requested reimbursement of the examination fee.

The DPMA had rejected the application for reimbursement of the examination fee.

Decision of the court

After the Federal Patent Court (BPatG) had already rejected the patent applicant's appeal, the patent applicant's appeal on a point of law with the Federal Court of Justice (BGH) was also unsuccessful and was rejected by the BGH by means of Beschluss vom 06.05.2014 – Az. X ZB 11/13.

The patent office examines on request whether the patent application meets the statutory requirements, in particular whether the subject matter of the application is patentable. A fee of EUR 350 must be paid for such an examination request, which becomes due with the filing of the request and must be paid within three months of becoming due. In the present case, the patent applicant filed the patent application on 05.05.2008, filed an examination request and also paid the filing fee and the examination fee, since the date of receipt of the direct debit authorisation at the DPMA is deemed to be the date of payment in light of the grant of a direct debit authorisation.

The claim of priority effective from 23.05.2008 for the further application filed on 13.05.2008 had – as correctly established by the Federal Court of Justice (BGH) – the consequence that the earlier application was deemed to be withdrawn. Moreover, the patent applicant had expressly withdrawn the application on 23.05.2008. As a result, examination of the application could no longer take place.

In the view of the Federal Court of Justice (BGH), however, this does not result in any entitlement to reimbursement of the examination fee.

In particular, in the present case constellation, an entitlement to reimbursement does not arise from § 10 Abs. 2 PatKostG, pursuant to which in the event that a patent application is deemed to be withdrawn, the examination fee for a previously filed examination request lapses with effect ex nunc, provided that the fee has not been paid up to that point in time and examination of the application has not yet been commenced.

§ 10 Abs. 2 PatKostG, by contrast, does not cover the constellation, according to the Federal Court of Justice (BGH), that the examination fee has already been paid on or after the due date and the patent application is withdrawn at a later point in time or is deemed to be withdrawn. For this case, the law does not provide for reimbursement of the fee even if examination of the patent application has not yet been commenced.

An interpretation of § 10 PatKostG to the effect that an already paid examination fee must also be reimbursed if the patent application is withdrawn or is deemed to be withdrawn is – according to the Federal Court of Justice (BGH) – not mandated by constitutional law.

Whether the patent applicant who has filed an examination request is burdened with the examination fee when the application is deemed to be withdrawn at a later point in time depends solely and exclusively on whether they have already paid the fee by that point in time or not.

Conclusion

The DPMA may retain an already paid examination fee in the event of withdrawal of the patent application, even if it has not conducted examination of the patent application and examination can no longer be conducted.

Against the background that the applicant for a patent is neither required to file the examination request at the same time as filing the patent application nor compelled to pay the examination fee already with the filing of the examination request, it is generally advisable to file the examination request only when it is foreseeable that examination of the application will actually be required, and to pay the examination fee only at that point in time.