b) No different apportionment of costs ordered – no disadvantage 

In T 28/91 three documents which had already been submitted to the opposition division were re-submitted at a later stage in the appeal proceedings. The board ruled that the late submission was not disadvantageous as no new arguments had been introduced, and therefore no additional work had been necessary (see also T 133/06).

In T 525/88 the late filing was unjustified, but the request for apportionment of costs was rejected because the documents were of no relevance and did not affect the decision. The same applied in T 534/89 (OJ 1994, 464), T 876/90, T 1714/14. In T 882/91, the board did not look into whether the unjustified late submission had led to higher costs because it was of the opinion that the other party had not had to spend very much additional time and energy on the documents which had been submitted late and that there was therefore no reason to apportion costs (see the decisions on similar cases in T 737/89, T 685/91, T 556/90, T 231/90 and T 875/91).

In T 330/88 the respondents filed a new document two days prior to the oral proceedings. The board took the view that the late filing was unjustified but that an apportionment of costs would not be equitable as the appellants had had sufficient time to deal with the document, especially since the decision was not taken until four months after the oral proceedings and following the opportunity to present comments.

In T 336/86 the appellants submitted a prior patent belonging to the respondents for the first time in the appeal proceedings, which destroyed the novelty of the patent in suit. The respondents requested an apportionment of costs as the oral proceedings would not have been necessary had the patent been presented earlier. The board agreed that the late submission was not justified and that higher costs had been incurred as a result. However, as the respondents either had – or should have – been aware of the existence of their own patent, it took the view that an apportionment of costs was not justified.

In T 931/97 the opponent had submitted new evidence in appeal proceedings, which was already known to the patentee from earlier proceedings before the German Patent Office. The board held that where the patentee knew the documents and could assess their prospects a different apportionment of costs was not justified.

In T 1182/01 the board admitted into the appeal proceedings several documents filed late by the appellant and held that its decision to remit the case immediately to the department of first instance meant that the respondent had not incurred any undue cost burden in relation to the appeal in hand.

In T 633/05 the appellant referred for the first time in the statement of grounds of appeal to a document which had been cited in the European search report but not considered in the opposition proceedings. In the board's view, the appellant sought to provide new evidence in support of a line of argument already put forward in the opposition proceedings, namely the fact that certain features of the present invention were known in the art. As the said document was cited in the statement of grounds of appeal and was anyway part of the examination file, the respondent had had ample time to study the content of this fairly short document and prepare a rebuttal against the appellant's allegation that it disclosed some key features of the contested patent. Thus, the board had no reason to suspect that the appellant's late filing might have been aimed at delaying the appeal proceedings, or that it resulted in the respondent being burdened with unreasonable additional costs.

In T 273/10 the board found that the opponent had abusively withheld the document in question, which ought to have been submitted for adversarial scrutiny in good time. However, it also observed that this had not been the only reason why further oral proceedings had been necessary. At the stage when the initial proceedings had been adjourned, it would anyway have been impossible to close them the same day. The board noted that a full day had been needed for the second set of proceedings and, moreover, that continuation of the proceedings had given the proprietor an opportunity to put forward new auxiliary requests. It followed that, since both parties had benefited from the holding of further oral proceedings, it would not be equitable to order the opponent to bear the costs alone.

In T 213/14 the board exercised its discretion under Art. 13(1) RPBA 2007 not to admit auxiliary requests into the proceedings; it also refused a different apportionment of the costs. It held that a proprietor filing new requests in order to defend its position subsequent to oral proceedings being appointed or to receiving a negative preliminary opinion from the board was, with regard at least to the case in hand, not seen as an extraordinary circumstance justifying an apportionment of costs. Whilst the requests could arguably have been filed as part of the appellant's complete case, the later filing of these could not be understood to have resulted in significantly greater work for the respondent. The respondent should have considered what objections were to be made, including, where appropriate, possible objections as regards admittance of such requests into the proceedings.

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. It 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. It 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. 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.