T 2165/08 (Bi-cyclic nucleoside analogues/EXIQON) 11-02-2014

Reasons for the Decision

1. The board must under Rule 88(1) EPC take into consideration only the expenses necessary to assure proper protection of the rights involved and the costs shall include the remuneration of the representatives of the parties (see section II above). Under Article 16(2) RPBA:

"(2) The costs ordered to be paid may be all or part of those incurred by the receiving party and may inter alia be expressed as a percentage or as a specific sum. In the latter event, the Board's decision shall be a final decision for the purposes of Article 104, paragraph 3, EPC. The costs ordered may include costs charged to a party by its professional representative, costs incurred by a party itself whether or not acting through a professional representative, and the costs of witnesses or experts paid by a party but shall be limited to costs necessarily and reasonably incurred."

2. It is therefore clear that only reasonable costs necessarily incurred may be apportioned and such costs may include the cost of a representative of the party in question.

The respondent's submissions are that its representative spent a total of four and a half hours reviewing and responding to the appellant's "new submissions" (see paragraphs 3 and 4 of the declaration of Mr Warner). The board considers that to be a reasonable time to have spent and therefore the costs charged to the respondent by that representative for that time were, for the purposes of Rule 88(1) EPC and Article 16(2) RPBA, necessarily incurred.

3. However, the respondent's submission does not distinguish between those items in the appellant's submissions which are the subject of the board's order – namely, auxiliary requests 1 and 2 and document D51 filed with appellant's letter of 6 February 2013 and document D52 filed with appellant's facsimile of 12 February 2013 – and the other items in those submissions – namely the new main request (to which the respondent did not object) and auxiliary request 3 (which was held admissible). Thus it appears that the four and a half hours spent on the "new submissions" included reviewing and responding to all those submissions. That is wholly unsurprising but it would be wrong to allow the whole time since that would go beyond the scope of the board's order and, indeed, beyond the respondent's own argument that costs should be apportioned in respect of requests and documents "if they were not admitted into the proceedings". In the absence of any evidence showing how much time was spent in relation to each item, the best the board can do is divide the time spent (namely, four and a half hours) by the number of items (six) and allow the time spent in relation to the four items in question, thus three hours.

4. The remaining question is whether the amount of those costs is reasonable. The board considers that this assessment must be as objective as possible and therefore it should not simply order that the party paying costs pays the sum which the receiving party's representatives has elected to charge without considering whether that is in keeping with some norm, such as the current charges of representatives at the place and time in question, hence the observation in the board's letter of 16 October 2013 (see section IV above). Equally, the Board considers it is not desirable to adopt without question any level or measure of costs which might be seen as fixed either in time or by place. It has to be acknowledged that the charges made by representatives will vary over time, between locations and countries within the contracting states, and between different firms of representatives according to their experience.

5. The respondent submits that it believes that its representative's charge of £2,268 for four and a half hours work, or £504 per hour, was normal at the time (February 2013) for representatives in London with his firm's level of experience in opposition and appeal proceedings in the pharmaceutical and biotechnology sector. If it is thereby suggested that representatives with experience in the pharmaceutical and biotechnology sector should charge more than those with experience in other sectors of patent proceedings, the board rejects that suggestion since it can see no objective reason why any one such sector should command a higher charge than another. Certainly, no reasons to support any such suggestion have been provided.

6. As for the actual charging rate, there is no evidence that this is normal beyond the respondent's representative's belief. However, this caries some weight since, if that rate was not at or near the norm, the representative's firm would be unlikely to charge at that rate. To allow for the fact that £504 per hour may be at the top of, or slightly in excess of, the normal rate, the board considers that a rate slightly below that would better accord with the requirement that the costs apportioned must be reasonable and therefore adopts the figure of £400 per hour (about 80% of the rate put forward). The parties and others should note that the board's view as to both the time spent and the cost of that time are based on the facts of the present case and should not be considered a precedent for other cases.

7. Thus the board considers that the costs to be apportioned should be based on three hours of the respondent's representative's time charged at £400 per hour. The apportioned costs are therefore assessed at £1,200. The board's order below expresses the costs in sterling as that is the currency of the costs in question incurred by the respondent.