T 2197/16 - No appellate review of cost apportionment

Key points

•  "The opponent's appeal is against the opposition division's decision rejecting the opposition to European patent No. 2 296 858 ("the patent") and ordering the patent proprietor to pay 100% of the costs of the oral proceedings scheduled for 23 February 2016 to the opponent under Article 104(1) EPC. With its notice of appeal dated 14 September 2016, the appellant (opponent) appealed against the decision of the opposition division, except in so far as it relates to costs."
• "In its reply dated 3 April 2017, the respondent (patent proprietor) requested, inter alia, that the decision on costs be included in the subject of the appeal and that the discussion on this matter be reopened."
• The Board considers the OD's decision on the costs to be outside the scope of the appeal.
• 
  
• "The meaning of the generally-recognised procedural principle of free party disposition is that the appeal cannot extend to issues that, in view of the notice of appeal, the appellant themselves did not wish to be a subject of the appeal, nor can the extent of the rights be decided beyond the extent requested (see also decision T 689/09, point 1.7 of the Reasons)."
• "In the case in hand, the notice of appeal clearly shows that the appellant did not appeal against the opposition division's decision on the apportionment of costs. Nor does the statement of grounds of appeal refer to the issue of the apportionment of costs. Therefore the opposition division's decision in this respect is not the subject of the present appeal."
• "In view of the above, the issue of the apportionment of costs is a legal issue which may not be dealt with and decided on in the appeal proceedings, since it is not the subject of the present appeal. For that reason alone, the respondent's requests regarding the decision on the apportionment of costs are not admissible.'
• "the general considerations of [decisions T 753/92 and T 762/96 ] are applicable here mutatis mutandis since, if the respondent had lodged an appeal against the opposition division's decision on apportionment of costs, the appeal, with the apportionment of costs as its sole subject, would have been inadmissible under Article 106(3) and Rule 97(1) EPC. The respondent is only a party to the proceedings under Article 107, second sentence, EPC, and does not have the right to file a "cross-appeal" without limit of time and, unlike the rights the respondent would have as appellant, its requests are therefore subject to restrictions (see also decision G 9/92, OJ EPO 1994, 875, point 16 of the Reasons)."
• As a comment, the provision of Rule 97(1) "The apportionment of costs of opposition proceedings cannot be the sole subject of an appeal" is simply a choice of the legislator to limit the right to appeal and must be respected.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t162197eu1.html

7. Respondent's requests concerning the opposition division's decision on apportionment of costs

In the decision under appeal, the opposition division ordered the patent proprietor to pay 100% of the costs of the oral proceedings scheduled for 23 February 2016 to the opponent under Article 104(1) EPC.

The respondent's requests concerning the opposition division's decision on the apportionment of costs are inadmissible for the following reasons.

7.1 According to Article 108, first sentence, EPC and Rule 99(1)(c) EPC, the notice of appeal must contain "a request defining the subject of the appeal". This requirement pertains to one of the main functions of the notice of appeal. The appellant's initial request defines the extent of the appeal proceedings (see decisions G 9/92 and G 4/93, OJ EPO 1994, 875, point 1 of the Reasons; and decision G 1/99, OJ EPO 2001, 381, point 6.2 of the Reasons) and the appellant may file an appeal against the decision taken as a whole or in part (see decision G 1/99, supra, point 6.2 of the Reasons). This is the principle of free party disposition (ne ultra petita) (see decisions G 9/92 and G 4/93, supra, point 1 of the Reasons and G 1/99, supra, point 6.2 of the Reasons). This is also confirmed by the explanatory remarks to Rule 99 EPC 2000 in Special edition No. 5, OJ EPO 2007, 154, where it is stated: "The requirement of Rule 99(1)(c) EPC 2000 takes into account that the appellant's initial request - according to the case law of the Enlarged Board of Appeal (see G 9/92 and G 4/93, OJ EPO 1994, 875, and G 1/99, OJ EPO 2001, 381) - defines the subject of the appeal and thereby the framework of the appeal proceedings."

The meaning of the generally-recognised procedural principle of free party disposition is that the appeal cannot extend to issues that, in view of the notice of appeal, the appellant themselves did not wish to be a subject of the appeal, nor can the extent of the rights be decided beyond the extent requested (see also decision T 689/09, point 1.7 of the Reasons).

In the case in hand, the notice of appeal clearly shows that the appellant did not appeal against the opposition division's decision on the apportionment of costs. Nor does the statement of grounds of appeal refer to the issue of the apportionment of costs. Therefore the opposition division's decision in this respect is not the subject of the present appeal. It follows that the question of the principle of reformatio in peius is irrelevant.

It also follows that the present situation is not comparable with the example case presented by the respondent. Indeed, in the example case where the patent proprietor appeals against a decision of the opposition division which adversely affects them alone and the opponent raises further objections to the patent as granted or amended, the opponent's objections relate to the subject of the appeal and therefore do not extend the subject of the patent proprietor's appeal.

In view of the above, the issue of the apportionment of costs is a legal issue which may not be dealt with and decided on in the appeal proceedings, since it is not the subject of the present appeal. For that reason alone, the respondent's requests regarding the decision on the apportionment of costs are not admissible.

7.2 In addition, the board wishes to refer to decision T 753/92, which states in point 3.1 of the Reasons:

"Respondent I is adversely affected by the decision under appeal only in so far as his request for apportionment of costs has been rejected. If the Respondent I had lodged an appeal against this decision, the appeal, with the apportionment of costs as its sole subject, would have been inadmissible under Article 106(4) EPC. The fact that the Respondent I submitted the request for apportionment of costs merely as a party to the appeal proceedings as of right (Article 107 EPC) cannot, in the Board's judgement, render such a request admissible without contravening the principle of equal treatment. This request has therefore to be rejected as inadmissible." (confirmed in decision T 762/96, point 8 of the Reasons, which also refers to decision G 9/92, point 16 of the Reasons)

Although the facts in decisions T 753/92 and T 762/96 are different from those in the case in hand, the general considerations of these decisions are applicable here mutatis mutandis since, if the respondent had lodged an appeal against the opposition division's decision on apportionment of costs, the appeal, with the apportionment of costs as its sole subject, would have been inadmissible under Article 106(3) and Rule 97(1) EPC. The respondent is only a party to the proceedings under Article 107, second sentence, EPC, and does not have the right to file a "cross-appeal" without limit of time and, unlike the rights the respondent would have as appellant, its requests are therefore subject to restrictions (see also decision G 9/92, OJ EPO 1994, 875, point 16 of the Reasons).

8. Summary

Since none of the grounds for opposition on which the respondent relies prejudices the maintenance of the patent as granted, the appeal must be dismissed.

The respondent's requests concerning the apportionment of costs are inadmissible because the opposition division's decision on the apportionment of costs is not the subject of the appeal in hand.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The respondent's requests concerning the apportionment of costs are inadmissible.