T 0964/21 - Appeal against cost apportionment

Key points

• "The patent proprietor and opponents 2 and 3 (appellants) each filed an appeal against the interlocutory decision of the opposition division, in which the opposition division found that European patent No. 2 879 636 in an amended form [namely Auxiliary Request 12] met the requirements of the EPC. The appellant-proprietor's appeal lies also against the o.pposition division's decision to apportion costs against it."
• AR-12 before the OD is the current main request: "The appellant-proprietor requested as a main request that the decision under appeal be set aside and the patent be maintained on the basis of auxiliary request 12 underlying the impugned decision, or as an auxiliary measure that the appeals of appellant-opponents 2 and 3 be dismissed (i.e. maintenance of the patent in the version found to be allowable by the opposition division). Furthermore, it requested that the opposition division's decision as regards the apportionment of costs be set aside."
• Which is interesting, because then the proprietor no longer contests the decision of the OD on the higher ranking sets of claims. Is the appeal against the cost apportionment still admissible? (Rule 97(1)).
• Rule 97(1): "The apportionment of costs of opposition proceedings cannot be the sole subject of an appeal. "
• "The Board therefore concludes that the subject-matter of claim 1 of the main request extends beyond the content of the application as filed, contrary to the requirement of Article 123(2) EPC."
• "Since the further amendments in claim 1 of the auxiliary request, relating to the provision of an additional transmission layer, do not affect the above finding, as also acknowledged by the appellant proprietor, the patent may not be maintained on the basis of this request, also for non-compliance with the requirement of Article 123(2) EPC."
• "The appellant-proprietor requested that the opposition division's decision as to the apportionment of costs be set aside.

  The formulation of that decision is set out in the reasons of the impugned decision (cf. page 35) as follows:

  ".. the Opposition Division apportions to the Proprietor the costs of the remuneration of the representatives of the parties in respect to oral proceedings and for the undue delaying of the procedure in respect of late filing." 

• " the Board wishes to emphasise that an order on the apportionment of costs under Article 104 EPC must clearly state (at least) the kind of costs to be borne by the burdened party. The order referred to above does not in any way comply with this requirement. In this context, it should be noted that the order is so vague that it is not possible to clearly determine in particular,

  (a) whether the costs for the representatives in preparing for the oral proceedings are included, and

  (b) whether the costs for the representatives for both oral proceedings are included."

• "It should also be noted that the addition in the above-mentioned formulation "and for the undue delaying of the procedure in respect of late filing" does not provide a definition of any kind of associated costs and can only be seen as a hint to the reasoning for the decision, which seemingly was based on the principle of procedural economy. 

• " Furthermore, the opposition division's decision also fails in terms of substance. Irrespective of the question of whether a decision under Article 104 EPC constitutes a discretionary decision, it should first be noted in view of the submissions of appellant-opponent 2 that discretionary decisions can also be reviewed by the Boards in terms of their merits. ... A substantive review of a discretionary decision is therefore not excluded according to established case law. [i.e. G7/93]"

• "the fact that the patent proprietor did not contest the validity of one of the priorities of D22 [a prior right under Article 54(3) EPC] until the first oral proceedings before the opposition division cannot justify a different apportionment of costs in the present case."

• " it is noted that the Board also considers the appellant-proprietor's argument that the late filing of amended requests was also due to the late filing of the objections based on D22 to be convincing. "

• "there are no reasons that would justify a different apportionment of costs. Thus, the Board finds it appropriate that each party shall bear its own costs. Consequently, the decision of the opposition division as to the apportionment of costs is set aside."

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EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t210964eu1