2. Equity of a different apportionment of costs – case groups
2.3. Filing of opposition or appeal
Exceptions to the principle that each party must bear its own costs may also be made in cases of abusive conduct in which it is equitable to make an award of costs against one of the parties. An apportionment of costs is often requested on the grounds that the notice of opposition or appeal has been incorrectly filed. The fact that an appeal proves clearly inadmissible does not justify an award of costs if the appellant evidently has the subjective impression that he is adversely affected. A party which is of the opinion that the first-instance department has not acceded to its request may consider that it is adversely affected by the decision and may consequently decide to file an appeal. This is no more than its legitimate right to make use of the appeal procedure provided for in the EPC and to have the decision reviewed. Occasionally having to seek defence against unfounded or even inadmissible appeals is just one of the general risks of life and thus, in the absence of any further circumstances, does not justify a different apportionment of costs. The EPC makes no distinction between successful and unsuccessful appeals for the purposes of cost apportionment; so it cannot be argued that apportionment is justified if an appeal appears to be clearly inadmissible (T 614/89, T 772/95, T 2177/12, T 964/14).
In T 170/83 the opponents had used an incorrect form for payment of the opposition fee, thereby giving rise to a decision by formalities to reject the opposition; the opponents thereupon filed an appeal against this decision. The patent proprietors (respondents) requested that the appeal costs be awarded against the appellants, since it was their error which had rendered the proceedings necessary. The board rejected the request, taking the view that the appeal proceedings were not improper. An abuse justifying the apportionment of costs could only be rooted in the party's conduct during the proceedings.
In a number of cases the boards took the admissibility or allowability of an opposition or an appeal to be an indication that no abuse had taken place (e.g. T 7/88 and T 525/88). Similarly, in T 506/89, the board found that the opponent's filing of an appeal did not constitute an abuse of procedure and therefore rejected the request for a different apportionment of costs, since it had decided, in the oral proceedings, to maintain the patent as amended. Nor was there an abuse of procedure where the appeal was filed without new arguments (T 605/92) or where the appellant's chances of success were considered to be low (T 318/91). According to T 717/95 no abuse has taken place if a party to the proceedings misinterpreted the content of a citation when comparing it with the subject-matter claimed in the disputed patent.
In J 22/12 it was disputed whether an appeal against a communication issued on behalf of the examining division could be admissible. The board found that this was not the case. It considered that the filing of an opposition and of a subsequent appeal in the matter could not be considered as an abuse of procedure as they were actions which used the provisions of the EPC for the ends envisaged by those provisions. Thus the board found it appropriate that each party should bear its own costs.
- T 846/22
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.