T 1273/11 - Reimbursement

 EPO T 1273/11

For the decision, click here [C]

Key points

• During oral proceedings before the Board, the respondent requested an apportionment of costs in relation to the additional costs incurred because of the extremely late cancellation of the oral proceedings before the opposition division.
• The Board cannot decide on the request because it was filed only in appeal, not during the first instance proceedings hence not subject of the appealed decision (following T1059/98).
• A second point is that the claims were amended by adding a feature from the description. The Board does not admit the request, one of the reasons being that this would necessitate a remittal to the opposition division to perform or order an additional search, rather than this would be incumbent on the opponent. 

Reasons for the Decision 

[...]

6.3 Article 13(3) RPBA

The features added to claim 1, relating to the type of motor chosen, come from the description. This leads directly to the question whether such features have been included in the original search, or whether an additional search would be necessary.

6.3.1 Since the description is rather indifferent on the choice of motor (no particular effect is mentioned for any of the choices) it is unlikely that these features were included in the original search (Guidelines B- III, 3,5).

6.3.2 This leads to the question whether it falls upon the appellant/opponent to perform such a search. The respondent argued that the six weeks available to the appellant should suffice. However, the Board questions whether it is actually incumbent on the appellant/opponent, in the present case, to perform such a search. It would be more a question of a remittal to the opposition division to perform or order an additional search (Guidelines, D-VI, 5, see also T 1732/10, point 1.5 and T 447/09, point 2.3 of the reasons).

[...]

7.2 The respondent requested during oral proceedings a different apportionment of costs in relation to the additional costs incurred because of the extremely late cancellation of the oral proceedings before the opposition division. These proceedings were to be held on a Monday, the opponent only notified its absence on the preceding Friday; the oral proceedings were cancelled by fax on that same day.

The Board establishes that this request was not submitted before the opposition division, nor did the opposition division consider and decide upon such matter in the decision under appeal.

The Board concurs with T 1059/98 (reasons point 22) which states:

"Article 21(1) EPC provides that a Board of Appeal can only examine appeals from decisions of the first instance departments of the EPO. This clearly means, in the circumstances of the present case, that the Board cannot examine and decide upon a request for apportionment of costs incurred as a result of oral proceedings before the opposition division, if that request was presented for the first time before the Board of Appeal and thus no decision has been taken on this request by the first instance."

Also this request must therefore be rejected.