T 0702/15 - Always keep something pending

Key points

• The proprietor withdraws the appeal shortly before the oral proceedings. The opponent then requests a 'different apportionment of costs' (cost order against patentee). The Board is, of course, decide on the request for apportionment. The Board does not order a cost apportionment, because “an appellant is entitled to withdraw its appeal at any time. In view of the principle of free party disposition, this right may not be restricted.” As a comment, CLBA III.R.2.4 actually continues the cited sentence as follows: "this right may not be restricted, even implicitly by the threat of cost apportionment, on the grounds that oral proceedings have been scheduled and the opposing party cannot be notified in time".
• The opponent added that “[the patent in suit] was the parent application of four divisional applications, directed to similar subject matter. The appellant withdrew its approval of the text of those already granted; two of them were still in examination proceedings. By withdrawing its appeal, the appellant was preventing any decision on that subject-matter.”
• The Board does not see a ground for a cost apportionment in this. The Board adds that “Article 76(1) and Rule 36 EPC stipulate the conditions under which a divisional application can be filed. The board fails to see any basis in the EPC for a different treatment of a divisional application if a patent arising from an earlier application is no longer defended by its proprietor.”
• As a comment, I note that the OD's decision to revoke the patent is now final. As to whether such a decision has a res judicata or estoppel effect on the divsional, see CLBA II.F.2.4.3.

EPO T 0702/15 -  link

Reasons for the Decision

1. The appeal is admissible.

2. As the appellant in the present appeal proceedings has withdrawn its appeal, the sole issue remaining is the request of respondent 1 that all the costs incurred during these appeal proceedings be awarded against the appellant.

3. Costs (Article 104(1) EPC)

3.1 Under Article 104(1) EPC, each party in opposition proceedings bears the costs it has incurred, unless the opposition division, for reasons of equity, orders a different apportionment of costs. This principle applies equally to opposition-appeal proceedings in view of Article 111(1) EPC in conjunction with Rule 100(1) EPC (see T 2165/08 of 6 March 2013, Reasons 45).

3.2 Respondent 1 requested that the board award all of its costs against the appellant for the following reasons.

3.2.1 By withdrawing its appeal at a late stage, the appellant had obliged respondent 1 to perform a considerable amount of unnecessary preparatory work.

However, according to case law (Case Law of the Boards of Appeal of the EPO, 9th edition 2019, III.R.2.4), an appellant is entitled to withdraw its appeal at any time. In view of the principle of free party disposition, this right may not be restricted. As a rule, the benefits that respondents derive from the withdrawal of the appeal offset the costs they have incurred.

3.2.2 Respondent 1 also argued that the patent in suit had considerable economic value and was the parent application of four divisional applications directed to similar subject-matter. The appellant had also withdrawn its approval of the text of those two divisional applications already granted; the remaining two were still in examination proceedings. According to respondent 1, it was clear from the appellant's passivity with regard to these appeal proceedings that it had never intended to defend its case. It had not filed any response to the issues raised in the responses to the statement of grounds of appeal. It did not reply to the communication of the board in preparation for oral proceedings. It had also not requested interpretation. The withdrawal formed part of the patent proprietor's strategy of trying to avoid any substantive decision on the claimed subject-matter. A similar strategy had been used in the family of divisional applications arising from the European patent which resulted in appeal T 211/15. Intentionally prolonging legal uncertainty about the claimed invention should not be allowed.

However, respondent 1 is relying only on assertions about what the strategy of the appellant might have been. The present appeal is based on the decision of the opposition division that the patent in suit contained added subject-matter. The board had informed the parties in a communication annexed to the summons to oral proceedings that it intended to examine the issues of the admissibility of requests, added subject-matter and Rule 80 EPC, and to remit the case to the opposition division if any request before it did not show any of those deficiencies. The withdrawal of the appeal did not prevent the board from taking a decision on the patentability of the claimed subject-matter, since it was not minded to examine all of the issues raised in the opposition proceedings.

3.2.3 Lastly, respondent 1 objects to the fact that the EPO could grant patents based on divisional applications which related to subject-matter granted and then subsequently abandoned.

Article 76(1) and Rule 36 EPC stipulate the conditions under which a divisional application can be filed. The board fails to see any basis in the EPC for a different treatment of a divisional application if a patent arising from an earlier application is no longer defended by its proprietor.

In addition, the powers of a technical board of appeal are limited to examining the case before it. The EPC does not allow a technical board to instruct an examining division dealing with a case which is not the one under appeal. Under Article 18(1) EPC, only the examining division is responsible for the examination of the case before it.

Furthermore, the board fails to see any connection between the examination of divisional applications and the present request regarding a different apportionment of costs.

3.3 The board thus sees no reason to order a different apportionment of costs for the present proceedings.

Order

For these reasons it is decided that:

The request of respondent 1 for a different apportionment of costs is refused.