T 854/09 – Ultimate Responsibility

The patent proprietor filed an appeal against the division of the Opposition Division (OD) revoking the opposed patent.

The Board finds the second auxiliary request to be allowable and then deals with the question of whether costs should be apportioned.

[5.1] The proprietor also appeals the OD’s decision to apportion 50% of either opponent’s costs to the proprietor under A 104(1). The OD held […] that this was justified as the proprietor had filed a new request based on material from the description towards the end of oral proceedings (OPs), and this necessitated adjournment to allow the opponents to react and also to deal with the remaining requests.

[5.2] By invoking its statutory right to OPs, A 116, a party can ensure that it is heard before any decision adverse to it is taken, A 113(1). OPs thus provide a final opportunity to be heard and, with the pronouncement of the decision, will normally conclude the procedure. With this general purpose of OPs in mind, parties should conduct themselves accordingly. Their actions should therefore not intentionally or irresponsibly jeopardize the taking of a decision at the OPs.

[5.3] In the present case the proprietor submitted new main and auxiliary requests at the beginning of the first OPs held 3 July 2007 and in the course thereof amended the first auxiliary request several times […]. As a direct consequence of the proprietor’s filing of new requests and repeated amendment of the first auxiliary request during the OPs, where further requests still needed discussion, the case could not be concluded at the first OPs and a further OPs became necessary.

It is certainly true that the OD could have used its discretion under R 116 not to admit such a late filed request based on material from the description to ensure timely conclusion of the case, but failed to do so. Nevertheless, responsibility for filing amended requests so late ultimately lies with the proprietor, who is taking a calculated risk.

Nor is it apparent to the Board from the file that the late filing might somehow have been justified by points newly raised by the OD or the opponents during the OPs. It was the proprietor himself who at the OPs first mentioned the feature in question - superficial exposure - and its significance […].

[5.4] As the adjournment was primarily the result of the late filing of the new first auxiliary request, though it need not have been admitted, the Board finds it equitable to apportion part of the ensuing costs to the proprietor as foreseen in A 104(1).

The Board therefore confirms the OD’s decision to apportion 50% of opponents’ costs to the proprietor. The costs concerned are those reasonably incurred by either opponent in connection with the second OPs, that is the expenses of a single representative for each opponent preparing for and attending the second proceedings, including travel and accommodation.

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