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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