2.2.3 Other cases concerning oral proceedings

An apportionment of costs is justified if excessive costs are incurred for the oral proceedings and caused mainly by one party (see T 49/86). The right to oral proceedings is absolute and therefore not subject to any conditions (T 614/89, T 26/92, T 81/92 and T 408/02). If the party that requested oral proceedings fails to produce new arguments during them, that does not constitute abuse of procedure and is not a reason for awarding of costs, as consistently ruled in T 303/86, T 305/86, T 383/87, T 125/89 and T 918/92 (but not in T 167/84, OJ 1987, 369).

In T 1022/93 the oral proceedings, which only the appellant had requested, were superfluous. Even in the written appeal procedure the appellant had refrained from communicating why, in its opinion, the amended process claims should be considered inventive and from specifying that the additional example described a process according to the amended set of claims. This made it impossible either to remit the case without oral proceedings or to deal with the substance of the case at the oral proceedings. For reasons of equity, therefore, the appellant was required pursuant to Art. 104(1) EPC 1973 to reimburse to the respondent the costs incurred as a result of the participation at the oral proceedings before the board.

In T 905/91 the respondents had requested a different apportionment of costs on the grounds that the appellants had not brought prepared auxiliary requests to the oral proceedings, which had therefore continued into the afternoon. The board rejected the request for the following reasons. Firstly, the appellants had endeavoured to take account of the reservations expressed by the board and had filed new documents. Secondly, oral proceedings served specifically to clarify the situation completely through the direct exchange of arguments and, if necessary, to rephrase the patent application in the light of the outcome of the discussion. The duration of oral proceedings depended on the particular case; at any rate it was not unusual for such proceedings to continue into the afternoon, and the parties should be prepared for this.

In T 210/98 the respondent requested an apportionment of costs on the ground that the appellant had withdrawn three auxiliary requests at the beginning of the oral proceedings for which the preparation had been time-consuming. The board refused the request, stating that it was normal for parties to prepare themselves thoroughly for oral proceedings. A change of view was one of the situations with which a professional representative could be confronted during oral proceedings. As it was not exceptional for requests to be changed or withdrawn during oral proceedings as a result of the discussion held, no abuse of procedure could be seen in the withdrawal of requests at the beginning of the oral proceedings, which had apparently been a reaction to convincing written arguments.

In T 461/88 (OJ 1993, 295) the board decided that the appellants' insistence on hearing witnesses was clearly compatible with the principle of the responsible exercise of rights, as this may well have been the only means of proving the alleged public nature of the prior use. The board refused the request for apportionment of costs.

In T 668/03 the appellant requested an apportionment of costs in view of the fact that oral proceedings had to be held for a second time. As a matter of fact, the former oral proceedings had to be adjourned because the identity of one of the opponents had been drawn into doubt by the appellant during the first oral proceedings. The board pointed out that it was the duty of the respondent to make it clear throughout the procedure who belonged to the group of common opponents. However, had the appellant raised this issue before the first oral proceedings, it could have been dealt with in writing and thus the costs for further oral proceedings could have been avoided. Therefore, the board could not detect any reasons of equity which could be used to order a different apportionment of costs (likewise T 1404/10).

In T 490/13 the board considered that the appellant (proprietor) had manifestly failed to act with due care during the opposition proceedings in that, even if the appellant considered the objections, which had been raised by the respondent and had been endorsed by the opposition division in its summons to oral proceedings, to be unfounded, it still ought to have come up in time with a fall-back position to counter them. Its failure to do so had led to its appeal, the need for oral proceedings before the board and the remittal to the opposition division for an examination of claims that the opposition division could already have assessed the first time round. Responsibility for the remittal in this case lay with the appellant, so the board decided to apportion costs differently (Art. 104(1) EPC) and ordered the appellant to pay those which the respondent had incurred in relation to the oral proceedings at the appeal stage.

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. 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). 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.

In T 2061/19 the board considered that parties were by no means procedurally obliged to respond, let alone within a time limit, to a communication pursuant to Art. 15(1) RPBA 2020, even where the board's preliminary opinion was prejudicial to their interests. The absence of a reaction to such a negative preliminary, non-binding opinion of the board (Art. 17(2) RPBA 2020) could not constitute per se malicious or irresponsible behaviour that automatically amounted to an abuse of procedure within the meaning of Art. 16(1)(e) RPBA 2020.