T 0301/12 - Cost apportionment

Key points

• "In the board's communication accompanying the summons to oral proceedings, the board in some detail dealt with the appellant's arguments submitted upon appeal, concluding that the appeal was likely to be dismissed." 
• "  the appellant announced in writing that it "... will probably not be represented at the oral proceedings ...", while at the same time explicitly upholding the request for oral proceedings, and without providing further arguments on the substance. ... [This] submission is worded in terms which are, deliberately or not, unclear and leave the respondent in the dark as to the appellant's true intentions. In view of appellant's unclear statement, the respondent had no alternative than to properly prepare for the case of the appellant attending the oral proceedings." 
• " Each party is subject to an equitable procedural obligation to give notice, in good time and as early as possible, if not attending oral proceedings to which it has been duly summoned. If a party only knows shortly before the specified time for the oral proceedings that it is not going to attend, such equitable obligation extends also to informing any other parties to the appeal proceedings of such non-attendance. Failing which, an apportionment of costs in favour of another party, who has attended as summoned, may be justified for reasons of equity" 
• From the order: " The appellant shall bear the costs incurred by the respondent for the preparation and attendance of the oral proceedings by the representative." 
• An interesting question is whether the fixing of the costs will be done by a Formalities Officer of the OD or by a Registrar of the Board. Update 12.02.2019: as Mr. Rennie-Smith pointed out in a comment, the Board will decide itself on the fixing of the costs according to T2165/08 (" a request to fix the costs, accompanied by a bill of costs and supporting evidence should be filed with the board, and the prescribed fee paid")
• There is a rather particular letter of the appellant after in reply to the minutes of the BOard, expressing some surprise about a different apportionment of costs being ordered against them. 

EPO T 0301/12 -  link

Conclusion

33. The claimed subject-matter involves an inventive step. Thus, the finding in the decision under appeal that the ground for opposition of Article 100(a) in conjunction with Article 56 EPC does not prejudice the maintenance of the patent as granted, is correct.

Article 113(1) EPC - right to be heard

34. In its communication pursuant to Article 15(1) RPBA, the board provided a reasoned provisional opinion on some of the issues to be discussed at the oral proceedings. The grounds and evidence on which the present decision is based, are essentially those on which the decision under appeal and/or the board's provisional opinion were based. Hence, they are known to the appellant. Even though it was given the opportunity to make written and/or oral submissions thereon, the appellant neither replied in substance to the board's communication nor attended the oral proceedings.

Apportionment of costs

35. In opposition appeals proceedings the board may, for reasons of equity, deviate from the principle of each party bearing its own costs, and order their different apportionment (Article 104(1) in conjunction with Article 111(1), second sentence, Rule 100(1) EPC, and Article 16(1) RPBA. Such reasons of equity exist, when a party's costs arise from culpable actions of an irresponsible or even malicious nature by another party (Case Law of the Boards of Appeal, 8th ed. 2016, IV.C.6.2; cf. also Bostedt in Singer/Stauder, EPÜ, 7th ed., Art. 104 Rn 7).

36. Each party is subject to an equitable procedural obligation to give notice, in good time and as early as possible, if not attending oral proceedings to which it has been duly summoned. If a party only knows shortly before the specified time for the oral proceedings that it is not going to attend, such equitable obligation extends also to informing any other parties to the appeal proceedings of such non-attendance. Failing which, an apportionment of costs in favour of another party, who has attended as summoned, may be justified for reasons of equity (see for example decisions T 930/92, OJ EPO 1996, 191, and T 937/04 of 21 February 2006).

37. In the present case, both parties to the appeal proceedings had requested oral proceedings under the condition that the board was not inclined to concur with their respective positions. In the board's communication accompanying the summons to oral proceedings, the board in some detail dealt with the appellant's arguments submitted upon appeal, concluding that the appeal was likely to be dismissed. From the board's communication, it was not only clear to the appellant that oral proceedings would take place, but also that its conditions for the holding of oral proceedings had been fulfilled (cf. decision T 53/06 of 21 February 2018). Under these circumstances, the appellant could, in order to properly pursue its case, either have raised further arguments in writing to defend its position, or present them at the latest at the scheduled oral proceedings.

38. In reply to the board's communication, the appellant announced in writing that it "... will probably not be represented at the oral proceedings ...", while at the same time explicitly upholding the request for oral proceedings, and without providing further arguments on the substance. This submission was forwarded to the respondent. It remained the only, written or other, submission informing the respondent of the appellant's intention. However, this submission is worded in terms which are, deliberately or not, unclear and leave the respondent in the dark as to the appellant's true intentions.

39. In view of appellant's unclear statement, the respondent had no alternative than to properly prepare for the case of the appellant attending the oral proceedings.

40. Had the appellant ever clearly and unmistakably aired its decision not to attend the oral proceedings, or had it even explicitly withdrawn the request for oral proceedings, the board would have been in a position to cancel them and issue a decision in writing (cf. decisions T 930/92, supra, and T 212/07 of 18 November 2009); alternatively, it could have still held such oral proceedings, if possibly in the absence of both parties. In any case, the respondent would not have been left in the dark about the appellant's intentions, and - if the oral proceedings would still have been held - could have made an informed decision whether or not to attend them at its own costs (cf. decision T 123/05 of 24 May 2007).

41. Against this backdrop, the appellant's failure to clearly state its intentions as regards its attendance at the oral proceedings, is to be regarded as a culpable failure in its duties. Apart from arguably rendering the oral proceedings unnecessary, in particular as the respondent - in the absence of any submissions from the appellant additional to the grounds of appeal - had nothing to add, the respondent's time and expenditures for preparation and attendance have been wasted.

42. Under the specific circumstances of this case, for reasons of equity, an apportionment of costs in favour of the respondent is appropriate (cf. decisions T 53/06, supra; T 212/07, supra; T 2179/09 of 19 March 2013; T 258/13 of 11 January 2017; and T 1663/13 of 14 July 2016).

43. Under Rule 88(1) EPC, the decision on the apportionment of costs shall only consider a party's expenses necessary to ensure the proper protection of its rights involved. In particular, this may include the costs reasonably charged to the party by a single professional representative for the preparation of and attendance at oral proceedings, including travel and accommodation, if needed (cf. Article 16(2) RPBA and decisions T 854/09 of 11 March 2011; T 258/13, supra; and T 1663/13, supra). However, in the absence of exceptional circumstances, the further attendance of accompanying persons at the oral proceedings is regularly a matter of deliberate choice, but not a necessity in the sense of Rule 88(1) EPC (decision T 258/13, supra; cf. also decision T 930/92, supra, where the presence of one member of the respondent's company was considered justified under the circumstances of the case).

44. In the present case, no such exceptional matters had arisen that would have justified the apportionment also comprising the costs of the two persons (experts) accompanying the respondent's due representative. In particular, based on the submissions on file, no expert discussion was to be expected. Nor did the respondent announce the presence of the two technical experts at the oral proceedings beforehand.

45. The board's competence comprises not only the apportionment of costs, on principle, but also the fixing of their specific amount (Rule 88(2) in conjunction with Article 111(1), second sentence, and Rule 100(1) EPC, and Article 16(2) RPBA). The specific amount of costs to be paid will be fixed at a later stage as no detailed bill of costs and no supporting evidence have been provided by the respondent as of yet, let alone the appellant having had an opportunity to comment thereupon.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The appellant shall bear the costs incurred by the respondent for the preparation and attendance of the oral proceedings by the representative.