2.2. Acts or omissions prejudicing the timely and efficient conduct of oral proceedings

Catchword:

Where opposition proceedings have been interrupted under Rule 142(1)(b) EPC, acts done by the parties or the competent body of the EPO during the period of interruption are considered invalid. An appeal against a decision taken during the interruption is inadmissible, because it has no valid subject eligible for a judicial review. The RPBA also apply to requests for apportionment of costs under Article 104(1) EPC. A negligent behaviour may also justify apportionment of costs. However, the negligence must be serious enough to be considered equivalent to wilful misconduct.

Abstract

In T 846/22 the respondent (patent proprietor) had requested that its costs from the first and second instance proceedings should be charged to the appellant (opponent). The respondent argued that these costs were incurred through an abuse of procedure by the appellant, namely acting throughout the opposition and appeal proceedings whilst being a dormant company with the aim of circumventing possible remedies given to the parties by Art. 104 EPC. The board noted that acting on behalf of a third party could not be seen as a circumvention of the law unless further circumstances were involved (G 3/97, OJ 1999, 245, point 3.2 of the Reasons) and there was no requirement under the EPC that a party be equipped with sufficient financial means to comply with a merely hypothetical costs order. Moreover, the EPC did not offer the patent proprietor any kind of guarantee that an opponent would be able in fact to reimburse costs awarded against him (G 3/97, point 3.2.6 of the Reasons). Hence, the board concluded that there was no abuse of procedure in this respect and refused this request for apportionment of costs.

The respondent had further requested that its costs incurred for the preparation of the oral proceedings be charged to the appellant, who had only informed the board the day before the oral proceedings that it would not attend them. In particular, the respondent argued that, had it been informed, the costs for the preparation of at least part of the oral proceedings would not have been incurred, in view of the board's preliminary opinion, which was favourable to the respondent in respect of a number of issues. The board stated that the oral proceedings would have had to have taken place anyway. This was because of the respondent's auxiliary request for oral proceedings. Hence, in contrast to the case underlying T 475/07, the appellant's conduct had had no impact on the necessity of holding oral proceedings. The board noted that even when all parties attended oral proceedings, it was possible that not all the issues addressed in the preliminary opinion would be discussed, since for some of them the parties could refer to their written submissions. The board also pointed out that the respondent could not be sure that the preliminary opinion would be maintained in the oral proceedings. Deciding not to be prepared for an issue which could potentially be discussed at the oral proceedings, irrespective of the board's preliminary view on the issue, always involves some risk and it is the parties' responsibility to decide what to prepare for. In any case, it could not be asserted beforehand that the board's preliminary opinion would have rendered the oral proceedings unnecessary. For these reasons, the board did not consider it equitable to order the apportionment of costs in favour of the respondent. Hence, this request was refused too.