T 1404/10 - Equilibrium

In this decision (on an appeal against the rejection of an opposition) Board 3.2.01 also had to deal with a request for apportionment of costs.

The reason was that during the oral proceedings held on April 26, 2013, the patent proprietor questioned the identity of the opponent. As a consequence the OPs had been adjourned.

*** Translation of the German original ***

[7.1] The [opponent] requested that the [patent proprietor] should bear the hotel and travel costs for the head of the opponent’s […] patent department, which had been incurred as a consequence of the OPs being summoned afresh.

[7.2] In the present case the [patent proprietor] waited until the OPs before it expressed its doubts regarding the identity of the […] opponent, which made it necessary to summon new OPs. The [patent proprietor] admitted that it was already aware of the transfer of the relevant business four days before the date on which the OPs were to be held. On the other hand, the [opponent] admitted that it had forgotten to declare the transfer of the business. However, a transfer of the party status in the course of the proceedings can only be effective when the Board has been requested before the Board to register the legal succession and when the corresponding evidence has been filed (see T 19/97 [5]) – something that could only be done by the [opponent].

[7.3] Pursuant to A 104(1) EPC 1973 each party to the opposition proceedings shall meet the costs it has incurred unless a different apportionment of costs is ordered “for reasons of equity”. According to the case law of the Boards of appeal the requirement of equity is met when the behaviour of a party does not comply with the due care it may be expected to show.

The Board is of the opinion that in the present case – as explained under point [7.2] above – both parties were partly responsible for the situation where a new date for OPs had to be fixed. In particular, the Board cannot see any intentional abuse of proceedings, so that there are no reasons of equity that make it necessary to order a different apportionment of costs under A 104(1) EPC 1973 in favour of the [opponent].

Therefore, the request for apportionment of costs is not granted.

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