T 273/10 – All About The Money

Both the opponent and the patent proprietor filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form.

The Board decided to maintain the patent as amended during the appeal proceedings and then dealt with cost-related requests under A 104 and – which is less common – Article 16 RPBA.

*** Translation of the French original ***

Concerning the apportionment of costs ordered by the OD

[18] Pursuant to A 104(1) each party shall bear the costs it has incurred, unless the OD, for reasons of equity, orders a different apportionment of costs.

When ordering that the opponent bear the costs related to the second oral proceedings (OPs), the OD has concluded that document D10 had been filed belatedly during the OPs and, more precisely, during the examination of the second auxiliary request, which had been filed in the course of said OPs, but the subject-matter of which was identical, at least as regards content, with the same auxiliary request in its previous form. Thus the opponent would have had to envisage that the content under consideration would be discussed and that, as a consequence, said document had to be filed. The fact that the opponent was in possession of enlarged and coloured figures taken from this very document provided evidence that it had the intention of using it.

The Board does not challenge these elements and considers that the opponent has indeed withheld, in an abusive manner, document D10 which it should have submitted in due time so that it could be examined after due hearing of the two parties, thereby allowing the adverse party to analyse it with the required serenity.

However, it cannot be denied that the minutes of the OPs establish that this circumstance was not the only reason why second OPs were needed. As a matter of fact, when the OPs were suspended, i.e. on Friday, April 24, 2009, at 17:05, pending auxiliary requests 2, 3, 4, and 5 still had to be examined, which means that it would not have been possible to bring the proceedings to an end on this day. It should also be noted that the second OPs required a whole day from 9:30 to 18:50. Moreover, this way in which the proceedings were conducted allowed the patent proprietor to file new auxiliary requests 1 to 9.

It follows that the fact that second OPs took place was of benefit to both parties and there is no need to make the opponent bear all the costs for reasons of equity.

Therefore, the impugned decision shall also be set aside on this matter.

Concerning the request of the opponent 

that the patent proprietor reimburse part of its costs

[19.1] Article 16 RPBA stipulates that subject to A 104, paragraph 1, the Board may on request order a party to pay some or all of another party’s costs which shall, without limiting the Board’s discretion, include those incurred by any

• amendment pursuant to Article 13 to a party’s case as filed pursuant to Article 12(1);
• extension of a time limit;
• acts or omissions prejudicing the timely and efficient conduct of OPs;
• failure to comply with a direction of the Board;
• abuse of procedure.

[19.2] The [opponent] has pointed out, in support of its request, that the adverse party had proven negligent in its way of conducting the appeal proceedings, in particular by filing new auxiliary requests after the OPs, which requests did not comply with A 84 and A 123(2), as a result of a lack of attention in the preparation of these documents. Therefore, the [opponent] was obliged to send several letters to the Board and incur costs that could have been avoided.

[19.3] The Board considers it to be appropriate to remind [the parties] that at the end of the OPs held on February 3, 2011, the Board had issued an interlocutory decision according to which claim 1 of auxiliary request 8c did comply with the provisions of the EPC and had remitted the case to second OPs to be held on September 12, 2011, dealing with the adaptation of the dependent claims and the description. [The patent proprietor] has then successively filed three sets of amended claims on April 15, July 26 and August 23, 2011. [The opponent] has responded by filing observations on May 10 and August 15.

[19.4] The Board is of the opinion that the [patent proprietor] has indeed made drafting errors that could have been avoided, in the two first sets of claims cited above. However, the rectifications made subsequent to the communication of the Board and the observations of the [opponent] have made it possible to cancel the OPs, with the agreement of both parties. Therefore, the supplementary costs of the [opponent] were compensated by the cancellation of the OPs, which would have given raise to higher costs.

Moreover, the Board notes that the written submissions filed by the [opponent] on March 11, in which it challenged the interlocutory decision that had been made on February 3, which observations were repeated in a letter dated May 10, could not influence the course of the decision-making process.

Therefore, the request for reimbursement of costs is unfounded and has to be dismissed.

[19.5] The Board notes that the contents of the letter dated September 28, 2011, which only concerns the details of the expenses, cannot change the above conclusions.

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