2.1.2 Late submission was justified

Abstract

In T 964/21 the patent proprietor (appellant) requested, among other things, that the opposition division's decision as to the apportionment of costs be set aside. The formulation of that decision was set out in the Reasons of the impugned decision as follows: "... the Opposition Division apportions to the Proprietor the costs of the remuneration of the representatives of the parties in respect to oral proceedings and for the undue delaying of the procedure in respect of late filing".

The board emphasised that an order for the apportionment of costs under Art. 104 EPC must clearly state (at least) the kind of costs to be borne by the burdened party. According to the board, the order referred to above did not comply with this requirement. The order was so vague that it was not possible to clearly determine (a) whether the representatives' costs of preparing for the oral proceedings were included, and (b) whether the representatives' costs for both oral proceedings (i.e. for the one of 8 October 2019 and also for the later one of 26 April 2021) were included.

In this regard the board noted that according to the minutes of the oral proceedings of 8 October 2019 before the opposition division, the costs for both oral proceedings should be borne by the patent proprietor. This however was not properly reflected in the order and could not be assumed to be covered by it. Furthermore, in view of the fact that parties to opposition proceedings have a right to oral proceedings, such a ruling – without any limitations of the specific costs to be borne in relation to the oral proceedings and without providing sound reasons for such a decision – would not comply with the right to be heard in oral proceedings as enshrined in the EPC.

The board found that, even on the basis of the foregoing alone, the decision on the apportionment of costs was to be set aside.

Furthermore, the board held that the opposition division's decision also failed in terms of substance. According to established case law, a board should overrule a discretionary decision only if they conclude that it was taken in accordance with the wrong principles, without taking the right principles into account or in an arbitrary or unreasonable way, thereby exceeding the proper limits of its discretion (see Case Law of the Boards of Appeal, 10th ed. 2022, V.A.3.4.1b); emphasis by the board). A substantive review of a discretionary decision was therefore not excluded in the present case.

According to the board, the fact that the patent proprietor did not contest the earliest priority claimed for D22 in view of the embodiment of Figures B34A and B34B until the first oral proceedings before the opposition division could not justify a different apportionment of costs. In this regard it had to be taken into account that a novelty objection based on the embodiment of Figures B34A and B34B of D22 was raised for the first time in said oral proceedings. Even if a novelty objection based on the embodiment of Figure 1B of D22 was already in the proceedings, this did not mean that the patent proprietor would have been obliged to consider the validity of the priorities of D22 in relation to that objection.

With regard to the late filing of amended requests, the board did not see any procedurally abusive behaviour on the part of the patent proprietor, nor did the effort of the opponents caused by the late filing of the requests – which was partly due to the late submission of the objections based on D22 – appeared to be unduly high. The efforts for the preparation of the issue of admittance of the newly filed requests did not appear to the board to have caused unreasonable expense to the opponents. Moreover, such preparatory work could in no way justify the award of the entire costs of the oral proceedings.

Thus, the board found it appropriate for each party to bear its own costs. The decision of the opposition division as to the apportionment of costs was set aside.