2. Equity of a different apportionment of costs – case groups

In T 101/17 the board refused the respondent's (opponent) request for a different apportionment of costs. The respondent argued that the filing of auxiliary requests at the appeal stage – rather than at the stage of opposition – amounted to an abuse of procedure. Although the auxiliary requests were not admitted, it had nonetheless been necessary to prepare for the scenario that they would be admitted and to subsequently address them content-wise. The board considered that the case law of the boards of appeal did not support a different apportionment of costs. The board concurred with the approach taken in T 1848/12, namely that preparations for discussing the admission of late-filed documents were part of the normal work that can be expected of a party, as an application of the principle that each party bears its own costs. The board further observed that in order to establish any causal link between the respondent's expenses and the appellant's behaviour, the respondent would have to show that it was particularly the belated filing of requests that caused the expense rather than the filing of requests as such. The board failed to see what additional expenses the respondent had incurred by preparing for a discussion of these requests at the stage of appeal rather than at the stage of opposition, other than for the additional discussion on the admissibility of these requests. As a discussion on the admissibility of requests was a not uncommon occurrence in proceedings in general, this could hardly be credited with separately identifiable expenses. It was at least at this hurdle that the respondent's case failed and the request for a different apportionment of costs had to be refused. See also Chapter V.A.6.3. "Article 12(4) RPBA 2007".

In T 280/15 the board held there to be no doubt that, since the appellant's notice of non-attendance at the oral proceedings had been received only the evening before them at 18.23 hrs, the requirements under Art. 104(1) EPC and Art. 16(1)(c) RPBA 2007 for an apportionment of costs against him had been met. The late notice had caused the respondent to incur costs, such as travel and accommodation expenses and its professional representative's fee for 12 hours' preparation, which could have been avoided had the appellant conducted itself properly and observed the basic rules of courtesy. Moreover, the appellant's conduct, and particularly the fact that it had not informed the respondent direct, had prevented the respondent from limiting, if not avoiding, further costs for attending the oral proceedings. Ultimately the appellant's conduct in response to the board's negative preliminary opinion, expressed in a communication before the oral proceedings, also prejudiced the efficient conduct of the oral proceedings by the board. Had the board known sooner of the appellant's absence, there would have been no reason to hold oral proceedings and engage four interpreters; the interpreters requested by the respondent had also been ordered, at the Office's expense, because of the appellant's attendance, but had then had to leave the oral proceedings without interpreting anything.

In T 2313/15 the respondent (opponent) requested an award of costs in the event that the case was remitted to the department of first instance. The board decided to remit the case but not to order a different apportionment of costs pursuant to Art. 104(1) EPC. The board noted that the patent proprietor in the proceedings before the opposition division had dealt with all the objections raised by the opponent in the reply to the notice of opposition. That it did so only by argument, without submitting auxiliary requests and without requesting oral proceedings, was a legitimate defence against an opposition, though it ran the calculated risk of an immediate adverse decision. Thus, the patent proprietor had no particular obligation to request oral proceedings before the opposition division. Its right to appeal or to file further requests on appeal was not affected by the mere fact that it did not request oral proceedings. The board failed to see any legal basis for the implied assertion of the respondent that the rights of the patent proprietor in the appeal proceedings were somehow more restricted because it had not requested oral proceedings. Nor did the board consider it equitable to impute to the patent proprietor the fact that the opposition division had chosen to decide the case on the basis of only one of the various issues raised and without summoning to oral proceedings (and was within its rights to do so). Likewise, the decision to remit the case upon appeal in accordance with common practice could also not be imputed to the successful appellant (patent proprietor). Finally, the fact that upon appeal the appellant argued only against novelty over D2 as the sole ground for revocation was not in any way reprehensible as it was all the appellant was required to do.