T 475/07 – All ‘Bout The Money

Each of the opponents filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.

During the oral proceedings (OPs) before the Board of appeal (BoA), on March 2, 2010, the patent proprietor contested the admissibility of the appeal of opponents I because the names and addresses of the appellant were not mentioned in the notice of appeal and because the person having signed the notice (Lothar S.) had never been authorised by the opponent.

This led to the OPs being postponed. The BoA offered opponents I the possibility to remedy the deficiency within one month. An authorisation for Lothar S. was filed. OPs were again held on September 8, 2010.

The BoA came to the conclusion that the patent was to be revoked. It then dealt with opponent II’s request for an apportionment of costs:

*** Translation of the German original ***

[7.1] According to A 104(1),

“each party to the opposition proceedings shall bear the costs it has incurred, unless the OD, for reasons of equity, orders, in accordance with the Implementing Regulations, a different apportionment of costs.”

Pursuant to A 111(1) the BoA may exercise any power within the competence of the department which was responsible for the decision appealed.

Therefore, in the present case, the BoA can decide on apportionment of costs within the competence of the OD for reasons of equity.

[7.2] During the OPs before the BoA, on March 2, 2010, the [patent proprietor] disputed for the first time the admissibility of the appeal filed by [opponents I]. It asserted that

• the notice of appeal did not comprise the names and addresses of the appellants, and
• the signatory of the notice of appeal had not been authorised by [opponent I] […].

The second deficiency could only be remedied by submitting authorisations. Authorisations cannot be filed by facsimile (see Article 3 of the “Decision of the President of the EPO dated 12 July 2007”, Special edition n°3, OJ EPO 2007, 7).

Thus the [patent proprietor] must have been aware that in response to this objection, the BoA was obliged to postpone the OPs and summon the parties afresh to OPs. The fact that it had not requested the postponement itself is, therefore, irrelevant.

These new OPs have generated additional costs for the parties, which could have been avoided had the [patent proprietor] pointed out the deficiencies at an earlier stage. It could have done so, as the deficient notice of appeal dated March 16, 2007 was transmitted to it together with the communication dated March 27, 2007.

As a consequence, it is equitable to have the [patent proprietor] bear costs for the additional OPs.

[7.3] Consequently, it has to be decided which costs the [patent proprietor] shall bear.

[7.3.1] [Opponents I] have not directly caused the postponement of the OPs. However, its deficient notice of appeal was the trigger (Anlaß) for the postponement. Therefore, it would not be equitable to have the [patent proprietor] bear the additional costs incurred [by opponents I].

[7.3.2] [Opponent II] has requested apportionment of costs. As the admissibility of its appeal has not been questioned, it has not had any part in the postponement of the OPs. Therefore, the BoA has decided to have the [patent proprietor] bear only the costs incurred by [opponent II] for the additional OPs.

[7.4] Pursuant to R 88(2) the OD shall, on request, fix the amount of costs to be paid. Pursuant to A 111(1) the BoA may exercise any power within the competence of the department which was responsible for the decision appealed.

[7.5] [Opponent II] has put its costs for the additional OPs and their preparation at 2300 €.

R 88(1) provides that apportionment shall only take into consideration the expenses “necessary to assure proper protection of the rights involved. The costs shall include the remuneration of the representatives of the parties.”

Therefore, it had to be determined whether it was necessary to spend 2300 € to assure proper protection of the rights of [opponent II].

[Opponent II] had been represented in both OPs by Dr. Michael P., a self-employed patent attorney. Therefore, the remuneration of this representative is part of the adequate costs under R 88(1).

In decision T 930/92 [4.3] the BoA has come to the conclusion that costs amounting to 8750 DM for remunerating the professional representative for preparing for and attending the OPs during three and a half days were adequate.

“Costs may be fixed once their credibility is established.” (R 88(2), last sentence)

In the present case the BoA assumes that the professional representative could bill one day for preparing and another day for attending the additional OPs. Therefore, the cost estimate of 2300 € is credible. Consequently, the BoA considers that in the present case, exceptionally, a detailed cost calculation is superfluous.

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