Showing posts with label Apportionment of costs. Show all posts
Showing posts with label Apportionment of costs. Show all posts

Thursday, 5 December 2013

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.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

Thursday, 10 October 2013

T 2177/12 – You Got What You Wanted


As the present decision shows, a patent proprietor does not necessarily have the right to appeal the decision revoking its patent.

During the opposition proceedings, the patent proprietor had filed the following letter:


The Opposition Division (OD) then revoked the patent.

The patent proprietor then appears to have made up its mind, because it filed an appeal against the decision revoking the patent.

Unsuccessfully. Although some of the arguments presented by the appellant were quite creative, the Board found the appeal to be inadmissible.

Admissibility of the appeal

[1.1] The first sentence of A 107 reads as follows:
“Any party to proceedings adversely affected by a decision may appeal.”
It follows from this sentence that the appeal proceedings are open only to a party which was adversely affected by the impugned decision.

There is ample jurisprudence of the boards of appeal on the question of whether or not a party is adversely affected by a decision. In this respect the present Board agrees with the findings of e.g. T 961/00 [1].
“According to the established jurisprudence of the Boards of Appeal a party is only considered to be adversely affected by a decision if the decision does not accede to its requests (Benkard, EPÜ, EPÜ, Munich 2002, Article 107, Note 13 and the decisions cited therein, Case Law, 4th edition 2001, VII.-D, 7.3.2, and the decisions cited therein).”
“There is therefore an adverse effect if the result of the decision as defined by its order does not come up to the party’s request (T 244/85 [3], T 114/82, T 115/82, Benkard-EPÜ, loc. cit.). Conversely, there is no adverse effect when the decision is consistent with what the party in question has requested (T 506/91 [2.8]).”
[1.2] In the present case there was no explicit final request in the opposition proceedings. In its letter of 27 July 2012 […] the proprietor, in the first sentence, expressly disapproved of the text of the granted patent. In the second sentence, it stated that it did not request maintenance of the patent, and it further indicated that there was no text agreed to by the proprietor. In the last sentence, it drew the attention of the OD to decision T 655/01, which it said set out what had become the standard practice in these circumstances.

The proprietor disapproved of the text of the granted patent. In other words, it withdrew the approval given for grant of a patent in the text proposed in the communication according to R 71(3) EPC of 16 August 2010. This declaration can objectively only be interpreted as meaning that it did not wish the patent to be maintained as granted.

By indicating in the second sentence that it did not request the maintenance of the patent and, further, that there was no agreed text, it not only confirmed that it did not wish the patent to be maintained as granted, but also that it did not want the patent maintained in any form, i.e in any amended form.

T 655/01 concerns a case in which the proprietor, after receiving the summons to oral proceedings in the appeal proceedings, informed the board that it no longer approved the text of the patent as granted and that it considered the proceedings as terminated. The board then concluded, in application of the principle expressed in numerous decisions, that the patent had to be revoked (point [6] of the reasons).

In the present case, by citing this decision at the end of its letter and indicating that this was the standard practice, the proprietor invited the OD to follow that standard practice, i.e. to revoke the patent.

Thus, in the opinion of the Board, when the proprietor, in the same short letter, declares its disapproval of the text of the granted patent, specifically indicates that it is not requesting maintenance of the patent and cites a decision in which, in a similar case, the patent was revoked, this can, on the basis of an objective and bona fide reading, only mean that the proprietor wished the patent to be revoked. Nothing else can objectively be derived from the proprietor’s statement.

Hence the order of the impugned decision of the OD to revoke the patent corresponds exactly to the wish of the proprietor, so that the Board cannot see how it could possibly be adversely affected by the decision.

[1.3] The Board would also like to emphasise that it agrees with the established practice of revoking the patent pursuant to A 113(2) in such procedural situations. As a matter of fact, when a proprietor disapproves of the text in which the patent was granted and does not submit any amended text, this can only mean that it wishes to prevent any text whatsoever of the patent from being maintained. In the absence of any other legal mechanism in the EPC, and since the patent cannot be maintained against the will of its proprietor, revocation on the basis of A 113(2) is the most appropriate way to terminate the proceedings in the interest of legal certainty and without affecting the proprietor.

[1.4] The appellant argued that its letter had to be read as meaning that it wanted closure of the opposition proceedings, not revocation, so that the OD did not accede to its request and consequently it was adversely affected. It also argued that the last but one paragraph of its letter, drawing attention to A 113(2) and in which it was pointed to the fact that there was no agreed text on the basis of which the division could examine the opposition, was an indication that it wanted the file to be closed.

As explained above, the Board considers that from a bona fide reading of the letter it can only be concluded that the proprietor wanted revocation. The Board considers more specifically that even if whatever doubts as to the intention of the proprietor might have been present after having read only the first sentence, in which the proprietor disapproved of the text as granted, these were in any case dissipated by the statement that maintenance of the patent was not requested, by the absence of any proposal for an amended text, and by the citation of a decision in which the patent had been revoked in a similar case. If the proprietor wanted closure of the opposition proceedings or anything else, it should have made that clearer in its letter. The proprietor cannot expect the OD to apply a procedure different from that usual in such procedural situations, if this has not only not been requested, but in addition, as in the present case, case law is cited which supports the usual procedure.

Additionally, even if the proprietor’s letter were to be interpreted as a request for closing the opposition proceedings, the Board fails to see how revocation would have adversely affected the appellant. The appellant submitted that there were possible legal consequences, but failed to indicate what these might be. Nor did it dispute that its disapproval of the text of the granted patent had an ex-tunc effect, as does revocation (A 68), so that in both cases the patent would have been legally deemed non-existent from the outset.

The appellant also submitted that it made a difference for the public, because revocation gave the impression that the patent had been revoked as not in conformity with the EPC, whereas closure of the proceedings did not. The Board does not share this view, because it is clearly apparent from the reasons for the decision under appeal […] that the patent was revoked because the proprietor stated that it no longer approved the text in which the patent had been granted. The public could therefore see that the conformity with the EPC had not been examined.

In a different line of argument, the appellant also submitted that its letter dated 27 July 2012 did not contradict its request to have the oppositions rejected. In the Board’s opinion, since rejection of an opposition means maintenance of the patent, such rejection was made impossible by the proprietor’s disapproval of the text of the granted patent.

Moreover, T 329/88 cited by the appellant concerns a different situation, namely one in which the opponent-appellant did not wish to continue the appeal proceedings after the patent had lapsed in all Contracting States. The Board applied R 60(1) EPC 1973 (relating to the opposition proceedings) mutatis mutandis and closed the proceedings. In the present case there is no opponent-appellant.

[1.5] Furthermore, the appellant argued that the OD could not interpret its letter as a request for revocation because A 105a(2) EPC formally forbade it, and in any case it would be against the case law forbidding the filing of an opposition by the proprietor.

A 105a is part of the set of articles defining the limitation and revocation proceedings introduced in the EPC 2000. These proceedings are open to a proprietor wishing to limit its patent or have it revoked in the absence of opposition proceedings. In such a case the proprietor has to file a request and pay a fee (Article 105a(1)) and the Examining Division will then examine its request (R 91). Article 105a(2) thus forbids the filing of a limitation or revocation request under these specific proceedings (which are subject to payment of the corresponding fee) when opposition proceedings are pending. This is only logical, firstly in order to avoid having two different instances competent simultaneously, and possibly reaching diverging conclusions, and because the proprietor can limit or even request the revocation of its patent during opposition proceedings.

Thus, A 105a(2) does not prevent the proprietor from filing a request for revocation during opposition proceedings, nor does it prevent the OD from dealing with such requests.

Finally, limitation or revocation proceedings are specific proceedings which require formal acts (request, fee, etc.) and are clearly distinct from opposition proceedings as in the present case.

In G 9/93 […] the Enlarged Board of Appeal (EBA) decided that a European patent could not be opposed by its own proprietor. However, this clearly only limits the proprietor’s right to file an opposition but, again, does not prevent the proprietor from filing a request for revocation of its own patent during opposition proceedings initiated by another party.

[1.6] The appellant argued that the OD could not revoke the patent under A 101(3)(b), because this article was limited to cases in which the OD revoked a patent when, after examining amendments, it concluded that at least one ground for opposition prejudiced the maintenance of the patent. In the present case, there was no amended text to examine.

Even if the appellant were right, the Board fails to see how the OD mentioning this article of the EPC would adversely affect the appellant, as this would not have avoided revocation under A 113(2). Nor has the appellant presented any argument, apart from those already set above, as to why this might be the case.

[1.7] For the reasons set out above, the Board considers that the appellant was not adversely affected by the impugned decision, so that the appeal does not fulfil the requirement of A 107 and is to be rejected as inadmissible pursuant to R 101(1).

The Board then dismissed the request for a referral to the EBA and, more interestingly, rejected the request for an apportionment of costs.

Apportionment of costs

[3] The [opponents] argued that the filing of this appeal was an abuse of procedure by the appellant which justified apportionment of costs pursuant to Article 16(1)(e) RPBA. More particularly they submitted that the request for maintenance of the patent as granted was an abuse because it contradicted the final request of the proprietor in the opposition proceedings.

The Board does not share this view.

If a party is of the opinion that the first instance did not accede to its request, it may consider that it was adversely affected by the decision and may consequently decide to file an appeal. This is no more than its legitimate right to avail itself of the appeal procedure provided for in the EPC. When a proprietor, after revocation of its patent, files an appeal, the revocation decision is suspended and any opponents-respondents have to deal with the appellant’s submissions and possibly file replies if they wish to defend the impugned decision. Nothing different has happened in the present case.

Thus, in the present case the Board cannot see any abuse of procedure in a party filing an appeal after disapproving of the text of the patent as granted and obtaining a revocation decision.

Therefore, the requests for apportionment of costs are rejected.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

Friday, 26 July 2013

T 2165/08 – Risky Business


This decision on a revocation appeal contains (among other things) an interesting discussion of apportionment of costs.

[45] 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.”
That provision applies equally to opposition appeal proceedings by virtue of A 111(1). In such proceedings, Article 16(1) RPBA also applies and this provides that:
“(1) Subject to A 104(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
(a) amendment pursuant to Article 13 to a party’s case as filed pursuant to Article 12(1);
(b) extension of a time limit;
(c) acts or omissions prejudicing the timely and efficient conduct of oral proceedings (OPs);
(d) failure to comply with a direction of the Board;
(e) abuse of procedure.”
To decide on an apportionment of costs therefore, the board must (i) receive a request therefore, (ii) be satisfied that there are reasons of equity to depart from the usual régime that each party bears its own costs, and (iii) be satisfied that the costs in question were incurred in one of the five ways listed in Article 16(1) RPBA although, as the words “without limiting the Board’s discretion” make clear, the list is not exhaustive.

[46] As regards (i), the [opponent] made a request for apportionment of costs in its letter dated 22 February 2013 and maintained it during the OPs. As regards (ii), the board considers that “for reasons of equity” indicates that some circumstances of the case call for an apportionment different from the normal régime and, as indicated by the case-law (see generally “Case Law”, 6th edition 2010, pages 740 to 763), this means costs should be awarded against a party which can be held to have caused another party unnecessary expense that could have been avoided with normal care or by compliance with prescribed or established procedures. As regards (iii), this clearly requires an examination of each apportionment request in the circumstances of the particular case. As a practical matter, (ii) and (iii) will usually need to be considered together.

[47] In the present case the [opponent] seeks an apportionment of costs because the [patent proprietor] filed its auxiliary requests 1 to 3 and document D51 on 6 February 2013 – one month before the OPs – and document D52 on 12 February 2013 – which was even closer to the OPs. The [opponent] says this caused it unnecessary work, and thus consequentially unnecessary additional costs, which would have been avoided if the requests and evidence in question had been filed, as they should have been, with the statement of grounds of appeal. The [patent proprietor] says the new requests and documents were filed as a response to the board’s preliminary opinion of 30 January 2013.

[48] In this respect the facts as shown by the file are against the [patent proprietor]. As regards the requests, in its preliminary opinion the board raised no arguments or issues which were not already dealt with in the opposition proceedings so the requests filed on 6 February 2013 could, and to comply with Article 12(2) RPBA should, have been filed with the statement of grounds of appeal dated 17 December 2008. In fact the [patent proprietor] then filed a main and four auxiliary requests which were all unchanged from requests filed before the opposition division. It seems clear that the [patent proprietor] made a conscious decision, when substantiating its appeal, to pursue the requests which did not succeed at first instance and not to file any additional requests. In doing so it took the double risk that, if it changed its mind later and filed further requests in addition or in substitution, such requests might not only be inadmissible (see Article 13 RPBA) but that, depending on the circumstances, the [opponent] might seek an apportionment of costs. Inevitably, the later in time that such further requests are filed, the greater both those risks become.

[49] In the event, the [patent proprietor] filed the requests one month before the OPs, in an appeal which had then been pending for four years, and both risks materialised. As regards admissibility of the late-filed requests, the [patent proprietor] was relatively fortunate – the [opponent] did not object to the new main request which had been presaged by the previous auxiliary request 4 and the board has found the new auxiliary request 3 admissible; but as regards the other late-filed requests, there is no plausible or adequate explanation for the late filing. It is clear that, if they had been filed with the grounds of appeal, the [opponent’s] representative could have considered them with the other requests filed then, taken its client’s instructions on them then, and dealt with them together with the other requests in the reply. By filing them much later, the [patent proprietor] made the [opponent] repeat that process just for the additional requests which will inevitably have lead to additional and avoidable costs. To have caused that was inequitable behaviour (see point [46] above). The costs in question have been incurred by an amendment to the [patent proprietor’s] case, and thus fall within Article 16(1)(a) RPBA. Although it is unnecessary to decide the point, the board can see it could also be argued that in all the circumstances the late filing just before the OPs of new requests replacing those on file from the outset of the appeal was an abuse of procedure within Article 16(1)(e) RPBA.

[50] Turning to the late-filed documents D51 and D52, the [patent proprietor] argued that these supported its case on inventive step. The [patent proprietor] also suggested […] that document D51 was filed “in view of the board’s preliminary comments regarding inventive step” and […] that document D52 was filed “in view of the [opponent’s] submissions filed with letter of 26 May 2009”. The [opponent] argued that the relevance of the documents had not been established and that no explanation for their late production had been offered.

[51] The [patent proprietor’s] reliance on the board’s preliminary opinion leads to the same observation as in respect of the late-filed requests (see point [48] above): the board’s preliminary opinion raised no arguments or issues not already dealt with in the opposition proceedings so document D51 could, and to comply with Article 12(2) RPBA should, have been filed with the statement of grounds of appeal dated 17 December 2008. As regards the [patent proprietor’s] assertion that D52 was filed in response to the [opponent’s] reply of 26 May 2009, nearly four years earlier, this is in effect an admission of extremely late filing unaccompanied by any explanation why the document was not filed sooner. In the case of both documents there is no explanation why this evidence is so important that it should be admitted at the very last stage of the appeal proceedings. With respect to the [patent proprietor], the mere assertion that the documents support its case is otiose – it is axiomatic that any party considers that any item of evidence it filed supports its case just as it is self-evident that no party would file an item of evidence which did not support its case.

NB: Rare word of the day: otiose (meaning ‘futile’, ‘pointless’ …).

[52] It is clearly necessary for any party filing evidence in appeal proceedings after it has filed its grounds of appeal or reply to explain why it is doing so, if only because of the requirements of Article 13 RPBA and, at the risk of stating the obvious, that necessity is even greater when OPs have been appointed (see Article 13(3) RPBA). Thus, to file new documentary evidence one month before, or less than one month before, appointed OPs with no credible explanation why the evidence was not filed earlier is to run the same double risk of inadmissibility and costs mentioned above in relation to late-filed requests (see point [48]).

In the present case the [patent proprietor] actually underlined the inadequacy of its explanation by stating, in respect of document D51 in its letter of 6 February 2013, “The implications of this post-filed evidence will be explained during the oral hearing”. No such comment was made of document D52 in the [patent proprietor’s] later letter of 12 February 2013 but, equally, no explanation beyond a reference to the [opponent’s] reply of 26 May 2009 was offered.

[53] The board has no hesitation in finding this behaviour inequitable. The last-minute production of new evidence is not only discouraged by the rules of procedure (see Article 13(3) RPBA) but also inevitably causes additional work and cost for the party faced with it. In the present case, the absence of explanation, both of the evidence itself and of its late production, makes matters worse. It would always be unacceptable for a party to produce evidence without any explanation – unless conceivably its relevance is self-evident – why the evidence supports that party’s case. To produce evidence at the virtual end of the proceedings accompanied only by a statement that the explanation will be provided even later was not only discourteous but a clear, and apparently deliberate, attempt to frustrate the [opponent’s] preparation for the OPs. That was both an act prejudicing the efficient conduct of OPs and an abuse of procedure. In the board’s opinion, an apportionment of costs is appropriate under each of the provisions of Article 16(1)(a), (c) and (e) RPBA.

[54] The [patent proprietor’s] remaining argument against any apportionment of costs, that it would create a precedent by limiting the procedural options of parties, is unsustainable. There is no question of this case being a precedent in the sense of being the first of its kind (see again “Case Law”, 6th edition 2010, pages 740 to 763). Further, there is no question of inhibiting the future conduct of parties by limiting their procedural options which will remain exactly the same as before. Equally, in the future as before, parties must exercise their procedural options in such a manner that their conduct is not inequitable, otherwise they may incur orders for apportionment of costs. If the [patent proprietor’s] argument were correct, any party could behave as it wished without fear of any sanction in costs. That cannot be correct. The provisions of the law as to costs, like the provisions as to procedure generally, are designed to ensure fair procedural behaviour and the use of such provisions to sanction improper use of procedure should have no effect on the proper use of procedure by others in future.

[55] Therefore, the board has decided for reasons of equity to order an apportionment of costs so that the [patent proprietor] pays the [opponent’s] costs incurred by auxiliary requests 1 and 2 and document D51 filed with the [patent proprietor’s] letter of 6 February 2013 and document D52 filed with the [patent proprietor’s] faxed letter of 12 February 2013. Such costs will be limited as required by R 88(1) and Rule 16(2) RPBA.

Assessment of Costs

[56] Before the close of the OPs, the board and the parties discussed the procedure for fixing costs once an apportionment has been ordered. In this respect, the following is added for the parties’ information.

R 88 reads:
“(1) The apportionment of costs shall be dealt with in the decision on the opposition. Such 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.
(2) The OD shall, on request, fix the amount of costs to be paid under a final decision apportioning them. A bill of costs, with supporting evidence, shall be attached to the request. Costs may be fixed once their credibility is established.
(3) A request for a decision by the OD may be filed within one month of the communication on the fixing of costs under paragraph 2. The request shall be filed in writing and state the grounds on which it is based. It shall not be deemed to be filed until the prescribed fee has been paid.
(4) The OD shall decide on the request under paragraph 3 without OPs.”
This rule superseded R 63 EPC 1973 and references to the “registry” of the OD no longer appear. In the board’s opinion, references in R 88 to “the OD” must, for the purposes of costs to be assessed following an order in opposition appeal proceedings, be read as references to the board of appeal.

It appears to the board that, since the apportionment has been dealt with in the present decision (see R 88(1)), a request to fix the costs, accompanied by a bill of costs and supporting evidence should be filed with the board, and the prescribed fee paid, by the [opponent] within one month of the deemed date of receipt of the communication notifying this decision. R 88(4) provides that there shall be no OPs. However, the board envisages offering the [patent proprietor] one month to comment on the request, bill of costs and supporting evidence before making a decision on the amount of costs.

This is one more decision where the Board repeatedly cites certain pages of the Case Law Book (“pages 740 to 763”). I am not a big fan of citing “the Book” because the reader willing to check the reasoning of the Board has to read many pages, and filter out the relevant information. (Dare I say that such a citation is often otiose?) I for one would appreciate if the Boards cited the relevant decisions reported in the Book. Anyway, citing the Book by indicating page numbers is even worse because the three language versions of the Book obviously do not have the same information on the same pages. For instance, pages 740 to 763 of the English version correspond to pages 835 to 860 of the French version. Citing the relevant paragraphs is clearly more user-friendly. In the present case, “pages 740 to 763” corresponds to the entire chapter VII.C.7 dealing with apportionment of costs.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

Wednesday, 16 January 2013

T 671/08 – Bits & Pieces



This decision, although not a major one, contains some nice bits and pieces.

Both parties appealed against the decision of the Opposition Division (OD) to maintain the patent in amended form.

Admissibility of the appeal (A 108 and R 99).

[1.1] The appellant proprietor argued that the appeal by the appellant opponent was inadmissible, since the notice and the statement of grounds of appeal were filed on a letterhead of Saint-Gobain Recherche and merely indicated “par la présente nous formons un recours” (“hereby we file an appeal”) and “notre mémoire de recours” (“our statement of grounds of appeal”), respectively (emphasis added by the board). However, according to the first page of the notice of opposition, Saint-Gobain Recherche was not the opponent, but Saint-Gobain Glass France. Saint-Gobain Recherche was not and has never been a party to the proceedings and thus was not entitled to appeal (A 107 EPC 1973).

[1.2] The notice of opposition however clearly identifies Saint-Gobain Glass France as the opponent and Mr. J. as its professional representative having Saint-Gobain Recherche as professional address (parts III. and IV. of form 2300.1 received by the EPO on 11 July 2005).

[1.3] In the view of the board, the filing of the notice and statement of grounds of appeal on a letterhead porting his professional address does not shed doubts on whose name the appeal was filed, i.e. Saint-Gobain France Glass. This fact is not affected by the use of the unspecific identifications “nous” and “notre recours”.

The Board decides for these reasons that the appeal of the appellant opponent is admissible.

Admissibility of the main request and
remittal to the department of first instance on that basis

[2.1] The appellant proprietor’s main request is to set aside the decision under appeal and to maintain the patent as granted.

[2.2] The appellant opponent requested that this request not be admitted, since the patent as granted had not been defended by the proprietor in the proceedings before the OD. The proprietor’s main request during the opposition proceedings was to maintain the patent in a more restricted version, namely the claims according to the 1st auxiliary request in appeal. The board would thus decide on a request that had never been discussed before the OD. This was contrary to the principle that only what has been decided on first instance could be reviewed in appeal. In several decisions the boards of appeal had refused to admit requests having a scope wider than the requests discussed before the department of first instance.

[2.3] It is the discretionary power of the boards of appeal not to admit requests that could have been presented or were not admitted in the first instance proceedings (Article 12(4) RPBA). The boards when applying this discretionary power take into account all the relevant facts of the case. It contradicts the nature of a discretionary power that a given course of action be pre-established irrespective of the circumstances of the case. The board therefore considers that there is no absolute right of the patent proprietor to revert in appeal to the patent as granted nor that he is in principle hindered from doing so. There will be cases, as the present case shows, in which the admission of such a request poses no additional work and other cases in which such a request may even constitute an abuse of the proceedings. It follows thus that if such a request is submitted in appeal the board has to exercise its discretion under Article 12(4) RPBA and decide whether to admit or not such a request (see the discussion on this topic in T 28/10 [3.2-3], in which also the previous case law of the boards of appeal is discussed).

[2.4] The present main request differs from the proprietor’s main request at first instance (which is identical to the 1st auxiliary request on appeal) essentially by the absence of the sole characterizing feature. This feature however makes explicit what previously was implicit, namely that the purpose of a data transmission window is to allow the passage of electromagnetic waves (data) through that portion of glazing. The board thus considers this feature as being implicitly contained in the concept of a data transmission window.

[2.5] The board considers moreover that the appellant opponent cannot be unprepared to deal with the claims of the granted patent, since it was against these claims that he filed the opposition. Thus all the initial arguments, facts and evidence submitted with the grounds for opposition should speak against these claims. The appellant proprietor further filed his main request with the statement of grounds of appeal, i.e. at the earliest possible circumstance.

Thus under the present circumstances, the board considers that by admitting the main request the proceedings are not delayed nor the other party can be considered to be taken by surprise.

[2.6] The appellant opponent further argued that it was not clear what exactly the proprietor’s main request was, since the appellant proprietor had submitted amended description pages 1a and 2a which were marked “For all requests”, i.e. apparently also for the main request. This was however incompatible with the requested maintenance as granted.

[2.7] The board is not persuaded that the appellant proprietor’s main request was not clear at any moment. The request to maintain the patent as granted means to maintain it with the granted description, claims and drawings. The remark “for all requests” found on description pages 1a and 2a submitted with the statement of grounds of appeal seems to contradict this request. However, this contradiction is lifted by reading carefully the proprietor’s statement of grounds of appeal, since for all auxiliary requests the pages forming the description are individually identified, but not so for the main request. This clearly implies that the main request is based on the patent documents as granted with no amended description pages, i.e. what one would expect from a request to maintain the patent as granted. The board has thus no doubts on which patent documents the appellant proprietor requested maintenance of the patent for each one of the main or 1st to 4th auxiliary requests.

[2.8] The appellant opponent further requested that the case be remitted to the OD in order not to loose (sic) two instances in case that the board admitted the main request into the proceedings.

[2.9] Remission to the department of first instance is explicitly foreseen in Article 11 RPBA only if fundamental deficiencies are apparent in the first instance proceedings unless special reasons prevent from doing so. Thus even in case of a fundamental deficiency the discretion of the board is still required, with the emphasis being made however that remittal is the normal course of action in such a situation. This implies that in cases in which no fundamental deficiency is apparent, as in the present case, remittal of the case to the department of first instance is a discretionary issue which lies within the sole competence of the board.

[2.10] The OD found the main request not allowable, since the windscreen of claims 1 and 2 lacked novelty over A1. It is thus unlikely that the OD would have a different view on a claim having allegedly a larger scope, since the removal of the characterizing feature merely renders implicit what has been previously made explicit. Remitting the case to the OD would thus result in a foreseeable outcome, namely that the present main request be found not allowable for exactly the same reason as before, i.e. lack of novelty over A1. The remittal would thus serve no other purpose than wasting time and resources.

[2.11] The board for these reasons decides to admit the main request into the proceedings and not to allow the appellant opponent’s request to remit the case to the department of first instance on the basis of the main request.

The Board then discussed sufficiency of disclosure and found the invention to be sufficiently disclosed.

The main request and first auxiliary request were found to lack novelty.

The subject-matter of the second auxiliary request was found to be novel, but the Board was not able to take a final decision on inventive step:

[6.4.1] The OD based its assessment of inventive step when discussing the proprietor’s 3rd auxiliary request on a prior art that it identified as A0, which was acknowledged but not identified in the opposed patent in paragraph [0013]. It considered this prior art to be closer to the invention as document A1 and started from A0 as the closest prior art. The OD came to the conclusion that the invention claimed in the proprietor’s 3rd auxiliary request, which corresponds to the appellant proprietor’s 2nd auxiliary request in appeal, involved an inventive step even when starting from A0 (decision under appeal, reasons E4).

[6.4.2] It is however the established case law of the boards of appeal that it is not allowable to base the assessment of substantive patentability (novelty and inventive step) upon subject-matter not identified as forming part of the state of the art within the meaning of A 54(2) EPC 1973 (cf. Case Law, 6th ed., 2010, I.C.1.4).

[6.4.3] The appellant proprietor contested at the oral proceedings (OPs) before the board that the unidentified prior art mentioned in the opposed patent at paragraph [0013] was state of the art under A 54(2) EPC 1973.

The board is therefore impeded from considering this unidentified prior art for the assessment of inventive step.

[6.4.4] On the other hand, the board shares the view of the OD that document A1 does not represent a realistic starting point for assessing inventive step. The skilled person would not start from a document disclosing the properties of slot antennas when confronted with the problem of how to transmit data through a heatable windscreen. Document A1 is an accidental disclosure that may be considered when assessing novelty, but not as starting point when assessing inventive step.

[6.4.5] The appellant opponent requested that documents A2 to A12 and D13 be admitted into the proceedings. The appellant proprietor requested not to admit these documents as they were belated.

[6.4.6] The OD decided not to admit documents A2, A3, A5 and A7, since they were belated and prima facie not more relevant than document A1 (reasons, A2). The board sees no reasons to depart from this assessment and the appellant opponent did not argue that the OD exerted their discretionary powers in the wrong way. Documents A4 and A6 were never relied upon neither in the opposition nor in the opposition appeal proceedings.

Documents A8 to A12 were submitted with the statement of grounds of appeal and were thus never considered by the OD. Documents A9, A10 and A11 appear prima facie to correspond at least in part to the prior art mentioned in paragraphs [0012] and [0013] of the opposed patent and would appear thus to represent a realistic starting point for the assessment of inventive step.

The board finds documents A8 and A12 to be less relevant than documents A9 to A11 and thus does not admit documents A8 and A12. As decided under point [4.1.6] of this decision, the board does not admit document D13 as well.

[6.4.7] The board decides for these reasons to admit documents A9, A10 and A11 into the proceedings and to remit the case to the department of first instance for prosecution on the basis of the appellant proprietor’s 2nd auxiliary request (A 111(2) EPC 1973).

For the sake of completeness, the board wants to emphasize that the other findings in this decision, i.e. the issues of sufficiency of disclosure, added subject-matter, clarity and novelty, are part of the ratio decidendi of this decision and binding on the OD (A 111(2) EPC 1973). These issues have been finally decided by the board and cannot be raised again or contested by the parties.

Apportionment of costs

[7.1] With letter dated 29 December 2011 the appellant opponent raised a new objection under A 100(b) EPC 1973 arguing essentially that even nowadays it was not possible to manufacture an electric conductive coating being sufficiently transparent for a windscreen and having an electric resistance low enough to allow sufficient heating of the windscreen.

[7.2] The objection under A 100(b) EPC 1973 raised in the opposition proceedings was directed at the method of claim 9 of controlling heat dissipation in a windscreen with a transmission window, since the presence of a transmission window disturbed the current flow […]. The objections under A 100(b) EPC 1973 raised in the statement of grounds of appeal relied on the position of the transmission window […] and on the method of controlling heat dissipation in a windscreen with a transmission window […].

[7.3] At first OPs held on 11 January 2012 the appellant proprietor stated that it had been impossible to prepare a proper reply to this new objection under A 100(b) EPC 1973 due to the new year’s festivities. He thus requested adjournment of the OPs and repartition of costs.

[7.4] The board considers the appellant opponent’s objection to be a fundamental one that could not be ignored. This objection of insufficient disclosure is however different from the previously raised objections in the opposition proceedings and in the appellant opponent’s statement of grounds of appeal. It is directed to the impossibility of making an automotive windscreen glazing panel having an electrically heatable solar control coating layer independently from the presence or absence of a transmission window.

[7.5] The fundamental nature of the new objection would hence render any discussions on novelty and inventive step meaningless, had it been left unresolved. This case is thus an exception to the principles set out in Article 13(3) RPBA where amendments to a party’s case should not be admitted into the proceedings when their admission would lead to an adjournment of the OPs. Article 23 RPBA specifies namely that the Rules of Procedure shall be binding on the Boards of Appeal, provided that they do not lead to a situation which would be incompatible with the spirit and purpose of the Convention. Not admitting this objection would have gone against the principle of examination of its own motion enshrined in A 114(1) EPC 1973, since A 114(2) EPC 1973, which limits this principle and gives the EPO the discretion to disregard late filed facts or evidence, does not apply to late filed arguments. The appellant opponent’s objection under A 100(b) EPC 1973 is a late filed argument that, in the board’s view, cannot be disregarded without going against the spirit and purpose of the EPC.

[7.6] It was the late filing of this objection that made it impossible for it to be discussed at the first OPs without violating the appellant proprietor’s right to be heard (A 113(1) EPC 1973). It was thus the behaviour of the appellant opponent that made the adjournment of the OPs before the board necessary. The board considers it thus equitable that the appellant opponent bears all the costs incurred by the appellant proprietor in relation to the OPs of 11 January 2012, as requested by the appellant proprietor (A 104(1), Article 16(1)(a) and (2) RPBA).

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Wednesday, 14 November 2012

T 1771/08 – He Should Have Said “No”


In this case the opponent filed an appeal against the decision of the Opposition Division to reject the opposition.

On July 16, 2010, the parties were summoned to oral proceedings (OPs) to be held on November 17, 2010.

In a letter dated September 30, 2010, the representative of the patent proprietor requested a postponement of the OPs because he already had to attend OPs to be held on the same day and at the same time. The letter also mentioned the fact that the in-house attorney of the patent proprietor could not attend either.

The OPs were postponed to February 10, 2011.

During the OPs the opponent requested apportionment of costs because the postponement of the OPs had obliged its representative to prepare the OPs twice. Agreeing to postpone the OPs was not tantamount to waiving the right to have costs apportioned.

The Board came to the conclusion that the patent could be maintained as granted. It then dealt with the request for apportionment of costs:

*** Translation of the German original ***

[8.1] The representative of the [opponent], Mr K., has filed the auxiliary request that the costs be apportioned in favour of the [opponent] in case the appeal was dismissed. He requested [the Board to order that the patent proprietor bear the costs] corresponding to an additional day of preparation, i.e. 8 working hours. The fact that the OPs before the Board had been postponed had made it necessary for him to prepare twice for the OPs. He was of the opinion that the OPs should not have been postponed because, according to last paragraph of the “Notice of the Vice-President of DG3 of the EPO dated 16 July 2007 concerning OPs before the Boards of appeal of the EPO” (OJ EPO, Special edition 3/2007, 115, number 2.3), a statement why none of the other representatives of the law firm could attend the proceedings was required and no such statement had been provided in the request for postponement filed by the [patent proprietor]. When the chairman mentioned that the representative had agreed to the postponement when contacted by the registrar by phone and had added that he waited for summons for OPs to be held on an alternate date, the representative confirmed that he had said he “would” agree to a postponement but that this was not a waiver for an apportionment of costs resulting from the postponement.

[8.2] Pursuant 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 a different apportionment of costs. A 104(1) EPC 1973 has the same content in this respect.

The Board is of the opinion that apportionment of costs under A 104(1) […] is excluded when the representative of the [opponent] unreservedly (vorbehaltslos) agrees to a postponement of the OPs, because there are no reasons of equity justifying [apportionment].

In the present case the agreement was unreserved. There are no indications in the statement of the representative of the [opponent] that he “would” agree to a postponement which could be seen as a tacit reservation (Vorbehalt) that the agreement was only given in case the [opponent] had the right to claim apportionment of costs in favour of the [opponent]. In such a case the [opponent] cannot invoke the fact that the requirements for a postponement that are set forth in the above mentioned Notice dated 16 July 2007 have to be complied with.

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Friday, 16 March 2012

T 448/09 – Devoid Of Object


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

The OD had also taken a decision on the apportionment of costs:


In its statement of ground of appeal, the patent proprietor requested the Board to maintain this decision.


This gave the Board the opportunity to explain the extent of the devolutive effect of appeals:

[7] The appellant requested to maintain the decision with respect to the apportionment of costs and the request for fixing costs as referred to in paragraph 5 of the interlocutory decision in opposition proceedings dated 5 December 2008.

The Board, however, observes that this part of the decision of the opposition division has not been appealed. The devolutive effect of an appeal before a board extends only to the part of the impugned decision which is indicated in the notice of appeal as provided in R 99(1)c). This in turn implies that the part of the impugned decision not indicated in the notice of appeal becomes final on expiry of the time limit for filing an appeal and cannot later become an object of the appeal proceedings.

In the present situation, the aspect of the decision relating to the apportionment of costs was not appealed and is thus res judicata. The appellant’s request to maintain the decision with respect to the apportionment of costs is thus devoid of object.

Similarly, the appellant’s request to maintain the decision with respect to the fixing of costs is devoid of object since no such decision has been taken so far. As specified under point 5(d) of the decision under appeal the OD shall, on request, fix the amount of costs to be paid under a final decision apportioning them. Although the decision concerning the apportionment of costs has become final, no request regarding the fixing of costs has yet been filed.

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Friday, 9 March 2012

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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Thursday, 8 December 2011

T 1282/08 – You’re Too Greedy


Both opponents filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. About one year after having filed his statement of grounds of appeal, opponent 1 filed document D34, an article published in the journal of the Entomological Society of America in 1978. He requested the document to be admitted into the appeal proceedings and, as an auxiliary request, that the case be remitted to the OD.

The Board found D34 to be highly relevant because it prima facie disclosed all the features of use and method claims 1 and 15 and because it apparently indicated that the invention could not be carried out over the whole scope of the claims. It therefore admitted it into the proceedings.

The Board then dealt with the question whether the case should be remitted and whether costs should be apportioned:

*** Translation of the French original ***

[13] [Opponent 1] has not argued very strongly against a remittal. He has even filed an auxiliary request for a remittal if document D34 was admitted into the proceedings, as it indeed was. His only argument against a remittal, i.e. that the document had not been filed belatedly because it had been filed as soon as it had been discovered, is not convincing. Otherwise, any party could wait for the moment it deems appropriate for filing evidence, without giving any thought to the legal requirements concerning, for instance, the time limit for filing an appeal (A 99(1) and R 76(2)(c)) or to the completeness of the case on which an appeal is based (Articles 12(2) and (4) RPBA). Obviously, it is unacceptable to allow parties to decide themselves on what is belated and what is not.

[14] In the present case, [opponent 1] has found document D34 only on August 18, 2009, and has filed it immediately afterwards. The sole reason for not having done so at an earlier stage was that the document had only been found when carrying out a search on an apparently unrelated topic. However, it cannot be accepted for such a situation to turn to the disadvantage of the [patent proprietor] who could expect the statement of grounds of appeal to inform him on the complete case made against him (see Article 12(2) RPBA). The Board agrees with the [patent proprietor’s] submission that if the document had been produced together with the statement of grounds of appeal, there would not have been any necessity for a remittal: it would not even have been envisaged.

[15] As the document changes the case in a significant way […] and as the sole argument against a remittal is unacceptable, the Board comes to the conclusion that it is appropriate to remit the case.

Apportionment of costs

[16] The [patent proprietor] has requested apportionment of costs so that the [opponent 1] would pay all his costs, i.e. not only the costs related to the present appeal, but also to the additional proceedings before the OD. As far as the costs related to the appeal are concerned, he has argued that the fact that document D34 was taken into account changed the case in such a way that all the expenses related to the appeal were made in vain (en pure perte). [Opponent 1] has countered this request by pointing out that apportionment of costs was only justified if there had been an abuse of procedure, and that there had not been such an abuse in the present case.

[17] The Board does not endorse this argument, simply because of Article 16(1) RPBA:
(1) Subject to A 104(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
(a) amendment pursuant to Article 13 to a party’s case as filed pursuant to Article 12(1);
(b) extension of a time limit;
(c) acts or omissions prejudicing the timely and efficient conduct of OPs;
(d) failure to comply with a direction of the Board;
(e) abuse of procedure.
[18] These provisions clearly show that an abuse of procedure is only one item among a non-exhaustive list of situations that can justify apportionment of costs. The Board agrees that the late filing of document D34 by [opponent 1] does not constitute an abuse of procedure, but this is not sufficient for avoiding apportionment. As a matter of fact, the non-exhaustive list of Article 16(1) RPBA also mentions the case of an amendment pursuant to Article 13 to a party’s case, i.e. an amendment made after the filing of the statement of grounds of appeal or of the response thereto. As such amendments are allowed only if the Board choses to do so, they do not always result in apportionment of costs, but it is clear that the RPBA considers apportionment of costs in a situation that is identical to the present case.

[19] [Opponent 1] has also pointed out that document D34 could not have been found with the available search tools at the beginning of the opposition proceedings. This argument has only been made during the oral proceedings, without any proof. However, even if this argument is accepted provisionally, it cannot have any impact on the present case because the [patent proprietor’s] request only concerns the costs related to the appeal and the additional opposition proceedings and does not extend to the costs related to the prior opposition proceedings.

[20] [Opponent 1] has not alleged that the results that could be obtained with the search tools available in August and September 2009 (when D34 was found and filed) could not have been obtained during the period of four months ending on September 28, 2008 (when the time limit for filing the statement of grounds of appeal expired). As a matter of fact, it follows from what the Board has stated in points [13] to [15] above that [opponent 1] could (and should) have filed document D34 together with his statement of grounds of appeal. This misbehaviour (manquement) cannot be excused ; as it has created additional costs for the [patent proprietor], the Board is of the opinion that apportionment of costs is appropriate.

[21] However, the Board does not share the [patent proprietor’s] opinion that [opponent 1] has to pay all the costs related to the appeal and for the first instance proceedings to come. As far as the costs related to the appeal are concerned, the Board is of the opinion that at most the expenses related to the [patent proprietor’s] response to the statements of grounds of appeal filed by the [opponents] qualify as having been made in vain. As pointed out by the [patent proprietor], the remittal could have been avoided if at least one of the statements had invoked D34. Then the [patent proprietor] would have been aware of the whole case made against him and could have treated all its elements in his response. As document D34 has only been filed at a later stage, and as its relevance is such that it changes the case to the point that a remittal to the OD is justified, the expenses related to this response were made in vain and it equitable to let [opponent 1] bear those costs.

[22] Regarding the costs related to the first instance proceedings to come, the Board notes that certain Boards of appeal have sometimes ordered apportionment of costs for expenses to be made in the future (see T 847/93 [4] and T 715/95 [4]). Apportionment of costs is always at the discretion of the Board, and it may well be that those Boards were confronted, in the cases cited above, with different situations. However, the Board feels unable to arbitrate, at the appeal stage, on apportionment of costs that would arise in subsequent proceedings, on the progress (déroulement) and outcome of which one can only speculate for the time being. Each case of this type comprises some uncertainty, which makes it preferable to wait for the outcome of the subsequent proceedings before deciding on apportionment of costs. In the present case, if document D34 turns out to be decisive for the outcome of the opposition, then it would be more equitable to apportion the costs of the earlier proceedings rather than those of the subsequent proceedings. Therefore, the Board considers that in the present case apportionment of costs relating to the opposition proceedings, if such costs are to be apportioned, has to be decided by the OD at the end of the opposition, based on the situation that prevails at that time, and the requests that will have been submitted to it. Decisions T 758/99 [2], T 890/00 [5, 4th §] and T 1182/01 [4.3] are examples where the Boards have left it to the OD to decide on apportionment of costs arising in subsequent first instance proceedings.

[… Opponent 1] has to bear the costs which the [patent proprietor] had to bear in relation to his response […] to the statement of grounds of appeal.

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Wednesday, 14 September 2011

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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