T 1079/07 – A Matter Of Courtesy

The Opposition (OD) having revoked the opposed patent for the reason that the claimed invention was not sufficiently disclosed, the patent proprietor filed an appeal. The Board comes to the conclusion that none of the requests on file are allowable. It then deals with the opponent’s request for apportionment of costs.

[4.1] A 104(1) provides that “each party to the opposition proceedings shall bear the costs it has incurred, unless the Opposition Division (OD), for reasons of equity, orders, in accordance with the Implementing Regulations, a different apportionment of costs”.

By virtue of A 111(1) this provision applies also to opposition appeal proceedings.

[4.2] In support of its request for an apportionment of costs, the [opponent] has made reference to decision T 937/04 of the boards of appeal, in which it was held that [a patent proprietor], by informing solely the EPO and not the other parties only one working day before the oral proceedings (OPs) of its intention not to attend the OPs, had failed to exercise all due care required.

The then deciding board based this finding on the understanding that, if a party decided only shortly before the date scheduled for OPs that it was not going to attend them, its equitable obligations extended to informing any other parties to the appeal proceedings of its decision not to attend OPs (see point [5.1] of the reasons for the decision).

In the present board’s view, the factual situation of the case at issue is decisively distinguished from that of case T 937/04 because of the fact that the [patent proprietor] had informed the EPO of its intention not to attend the OPs already two weeks before the scheduled date of the OPs.

Under these circumstances, the [patent proprietor] cannot be held responsible for an unfortunate course of actions as a consequence of which the information reached the [opponent’s] representative only two working days before the scheduled date, nor for the fact that travel arrangements for the representative had been such that they could no longer be cancelled at that time.

Already for this reason a different apportionment of costs in favour of the [opponent] is not considered to be equitable.

[4.3] Besides, the board does not share the standards based on which the discretion in case T 937/04 was exercised. In the present board’s view, a party to proceedings before the EPO has a right to be heard in OPs but has no obligation to attend OPs to which it had been summoned (see for instance T 544/94 [5]). Thus, to inform the EPO and any other party to the proceedings about the intention not to attend OPs in due time before the scheduled date is a matter of courtesy and respect rather than a procedural obligation to be met.

In order to judge a late announcement of an intended absence to OPs as constituting a “culpable action of an irresponsible or even malicious nature” (see T 937/04 [5.1] of the Reasons) strong supporting evidence for such an allegation would be required.

Moreover, the mere fact that a party does not attend OPs does not mean by itself that its case will be lost, making the presence of the other party unnecessary. The outcome of a case cannot be certain until the board has taken its final decision. There can be no doubt in this context that views expressed in a board’s preliminary communication are nothing but provisional assessments which are by no means binding. Thus, however critical such views would be, there is no guarantee that they reflect the final decision. Therefore, each party is obliged to decide on its own and independently from the behaviour of another party to the proceedings whether or not to attend OPs. […]

The request of the [opponent] for apportionment of costs is rejected.

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To have a look at the file wrapper, click here.

NB: Remember that epi members are expected to act in a corteous way, as can be seen here.