T 0297/13 - Costs order for having document admitted

Key points

• In this opposition appeal case, the Board sets aside the OD's decision.
• The Board decides to admit D10, a late filed document filed by the opponent, because D10 is prima facie highly relevant. " In fact, D10 could arguably have been filed in the opposition proceedings or, at the very least, with the appeal grounds." 
• This leads to an apportionment of costs, against the opponent. " The late filing of D10 has in effect resulted in an entirely new case being presented at a late stage of the appeal proceedings, with the consequence that a further procedure before the opposition division, and possibly the Board, is required. [] For reasons of equity, an apportionment of the future costs caused by the late filing of D10 should be accorded in favour of the [patentee]." However, the case is remitted and these costs are therefore not yet clear.
• " Thus, it is incumbent upon the opposition division in its further prosecution of the case following remittal, to consider and decide upon the issue of apportionment of costs" 

EPO T 0297/13 -  link

2. Admission of D10 in the proceedings

2.1 The appellant filed D10 in response to the respondent's reply to the grounds of appeal.

2.2 The filing of D10 is very belated, and the factual situation of the case had not changed during the appeal proceedings. In fact, D10 could arguably have been filed in the opposition proceedings or, at the very least, with the appeal grounds.

2.3 However, the content of D10 is prima facie highly relevant for the questions of novelty and potentially inventive step.

3.2 In the oral proceedings, after the Board's decision to admit D10, both parties requested remittal of the case to the opposition division.

3.3 The Board sees no reason to revise its opinion. It thus exercises its discretionary power under Article 111(1) EPC to remit the case to the opposition division for further prosecution on the basis of D10.

4. Since the case is remitted, the Board refrains from taking a final decision on whether or not D10 anticipates the subject-matter of claim 1, as argued by the appellant.

5. However, before remitting the case and for the sake of procedural efficiency, the Board will decide upon a number of issues which are disputed by the parties, namely the interpretation of claim 1, the novelty of the claimed subject-matter with respect to D1, D5 and D8, and the alleged substantial procedural violation.

[...]

9. Apportionment of costs

9.1 The appellant [opponent], in filing D10 at a very late stage, has failed to exercise all due care required by the circumstances. Indeed, the piecemeal submission of evidence is not particularly conducive to the principles of economy and efficiency guiding all procedures before the EPO, as affirmed in particular by the Rules of Procedure of the Boards of Appeal.

9.2 The late filing of D10 has in effect resulted in an entirely new case being presented at a late stage of the appeal proceedings, with the consequence that a further procedure before the opposition division, and possibly the Board, is required.

9.3 For reasons of equity, an apportionment of the future costs caused by the late filing of D10 should be accorded in favour of the respondent.

9.4 However, the Board is not in possession of the necessary facts at this stage to decide upon an apportionment of the costs in the subsequent proceedings, of which the course and outcome can only be speculated upon (see Case Law of the Boards of Appeal, 8th edition, 2016, IV.C.6.3.3-a), in particular T 369/08, point 7.12 of the reasons and T 1282/08, point 22 of the reasons).

9.5 Thus, it is incumbent upon the opposition division in its further prosecution of the case following remittal, to consider and decide upon the issue of apportionment of costs in the light of the facts and requests before it, in accordance with the power conferred upon it by Article 104(1) EPC.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division for further prosecution.

3. The decision on the respondent's request for apportionment of costs will be taken at a later stage.