T 0967/12 - Number of requests and cost order

T 967/12

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Key point

• Filing 11 auxiliary requests with the Statement of Grounds, and withdrawing them and replacing them with two different auxiliary requests, is as such not a ground ofr apportionment of costs.

Reasons for the Decision
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7. Requests for apportionment of costs

7.1 Under Article 104(1) and Rule 100(1) EPC each party to the opposition/appeal proceedings bears the costs it has incurred, unless it is decided otherwise for reasons of equity.

7.2 In the case at hand, the opposition division revoked the patent because the three sets of claims discussed at the oral proceedings failed to meet the requirements of the EPC, in particular Articles 56 (main and first auxiliary requests) and 123(2) EPC (second auxiliary request).

7.3 With the grounds of appeal, the patentee submitted eleven sets of claims, with the two first sets of claims corresponding to the main and first auxiliary requests underlying the decision of the opposition division.

7.4 In the respondents' view, the number of requests filed with the grounds of appeal was excessive and amounted to an abuse of procedure. This was contrary to the principle of equity and greatly increased their costs, since each new request had to be reviewed and countered.

7.5 The board considers that the filing with the statement of grounds of appeal of a large number of requests is not, as such, either an abuse of procedure nor inequitable; it is merely an attempt to overcome the reasons given by the opposition division for revoking the patent, and the alternatives proposed in the different requests are fallback positions if the board of appeal followed the reasoning of the impugned decision. The conduct of the appellant in withdrawing the eleven contested requests and replacing them with two different auxiliary requests is also not objectionable. This is to be seen merely as a legitimate defence of its case (see decision T 0162/04, point 5. of the reasons).

The board therefore does not see sufficient justification for departing in this case from the principle that each party meets the costs it has incurred.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The requests for apportionment of costs are refused.