T 1777/15 - Apportionment of costs

Key points

• In this opposition appeal, the case is remitted based on an auxiliary request. The opponent (respondent) had requested that in the case of a remittal, "the costs it would incur in connection with the further prosecution before the first instance and any subsequent appeal proceedings be paid by the appellant".
• The Board refuses this request.
• "From the wording of Article 104(1) EPC ("costs [a party] has incurred" (underlining by the board)), Rule 88(2) EPC, which relates to a bill of costs, and Article 16(1) RPBA, it follows that a decision on an apportionment of costs cannot be made in respect of future costs"
• As a first comment, Rule 88(2) is completely irrelevant here because it is about the procedure for the fixing of the costs, which is a distinct and separate procedure from the decision to give a different apportionment of the costs. The bill of costs (invoices and the like) can indeed by submitted for costs already incurred, but that is precisely why the fixing of the costs is in a separate procedure. I find it somewhat concerning that this Board confuses these two procedures.
• Furthermore, there is an established line of case law (though a bit older) that in case of a remittal (for a newly filed document), the  "costs between the parties should be apportioned under Article 104 [...], in such a way that the late-filing party should normally bear all the additional costs caused by his tardiness" (T 326/87, hn, OJ 1992, 522, CLBA IV.C.6.3.3). As an example of a cost order for future costs after remittal: see T622/89: "The Opponent shall bear all the costs of the Patentee reasonably incurred in the course of the further prosecution of the opposition before the Opposition Division, and of any appeal therefrom." (which is cited in Singer/Stauder, 5th edition, Art.104 nr.32. 
• As the Board does not engage with existing case law, I don't find the Board's reasoning convincing. In addition, for interpreting a legal provision, one can often not restrict oneself to the plain text, but needs to take into account the case law, purpose and system, and the travaux as well, unlike the Board in this case. 
• The Board also appears to indicate that for the OD to hold inadmissible a request filed after the date for written submissions under Rule 116, the OD must give more reasons than the observation that the request is filed after that date. However, the Board states that "In the present case, no reasoning was given" and also that "Without any reasoning" , while at the same time acknowledging that the written decision of the OD includes the statement that the  opposition division did not admit this request "as it is late filed, Rule 116(2) EPC" and "for the reason of being late filed, according to Rule 116(1) EPC". The Board may find it grossly insufficient reasoning, I don't think the OD gave "no reasoning". 

EPO T 1777/15 - link

5. Auxiliary request 4: admissibility (Article 12(4) RPBA)

5.1 Claim 1 of auxiliary request 4 corresponds to claim 1 of auxiliary request 3, except that the first alternative referred to in point 4 above has been deleted.

5.2 The claims of auxiliary request 4 are identical to the claims of auxiliary request 6 filed before the opposition division at the oral proceedings. The opposition division did not admit this request "as it is late filed, Rule 116(2) EPC" and "for the reason of being late filed, according to Rule 116(1) EPC" (see points 1.17.18 and 2.8.1 of the decision under appeal and point 16.9 of the minutes). No further reasoning was given.

5.3 Article 12(4) RPBA gives the board the discretion to hold inadmissible requests which could have been presented or were not admitted in the first instance proceedings.

It is established case law that any late filing of requests during an opposition procedure may be admitted at the opposition division's discretion (see, e.g., T 2415/13, point 1.3 of the reasons). For the parties and the board to be in a position to determine whether or not this discretion was exercised in accordance with the right principles or whether or not it was exercised in an unreasonable way (see G 7/93, OJ EPO 1994, 775; point 2.6 of the reasons), the reasoning on which the discretion was based must be set out in the decision.

In the present case, no reasoning was given (see point 5.2 above). Consequently, the board can only guess as to why the opposition division decided to not admit the late-filed request. Without any reasoning, the board is thus not in a position to determine whether the opposition division's discretion had been exercised in accordance with the right principles and in a reasonable way and hence, is not in a position to hold inadmissible the same request as filed with the statement of grounds of appeal. Auxiliary request 4 is therefore admitted into the appeal proceedings.

6. Remittal (Article 111(1) EPC)

6.1 Article 111(1) EPC gives the board the discretion to remit a case to the department of first instance. According to established case law, if no substantive examination as to the allowability of the subject-matter of a new, admissible request has been carried out by the department of first instance, the case is remitted, unless specific reasons present themselves for doing otherwise.

6.2 In the present case, as no substantive examination has been carried out and the board sees no specific reasons for not remitting the case, the case is remitted to the department of first instance.

7. Costs (Article 104 EPC and Rule 88 EPC)

7.1 Respondent II requested that in case of a remittal, the costs it would incur in connection with the further prosecution before the first instance and any subsequent appeal proceedings be paid by the appellant.

7.2 From the wording of Article 104(1) EPC ("costs [a party] has incurred" (underlining by the board)), Rule 88(2) EPC, which relates to a bill of costs, and Article 16(1) RPBA, it follows that a decision on an apportionment of costs cannot be made in respect of future costs, as requested by respondent II.

7.3 Therefore, the board rejects the request.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution on the basis of the set of claims of auxiliary request 4 filed with the statement of grounds of appeal.