T 1763/12 - Apportionment of costs

Key points: 

• A highly relevant prior art document is submitted by the opponent three days before the oral proceedings and is admitted into the proceedings by the Board. The case is remitted. However, the Board makes an apportionment of costs, such that the costs for the oral proceedings of the patentee are to be born by the opponent.

EPO T 1763/12 - link

Summary of Facts and Submissions

VII. With letter of 23 November 2015, appellant-opponent 2 submitted the following document:

O6A: US 5,332,429

VIII. During the oral proceedings held on 26 November 2015, the appellant-patent proprietor withdrew its main request.

Reasons for the Decision

1.3 Conclusion

In view of the above considerations, the Board in the exercise of its discretion decides to admit document O6A into the appeal proceedings.

2. Remittal to the first instance

The appellant-patent proprietor has requested that the case be remitted to the opposition division in case document O6A was admitted.

In order to give the appellant-patent proprietor sufficient time to react to the new evidence and in order not to deprive it of the possibility of being heard by the two instances, the Board allows its request. The case is therefore remitted to the department of first instance for further prosecution (Article 111(1) EPC).

3. Apportionment of the costs

Appellant-opponent 2 did not give any reason why document O6A was submitted only at such a late stage of the proceedings and why it could not file this document earlier. The consequence was that the discussion at the oral proceedings before the Board was limited to the issue of admittance of O6A without considering any substantive matter. This would have been avoided if the document had been filed earlier.

Accordingly, the Board considers it to be equitable that the expenses incurred by the appellant-patent proprietor in connection with the oral proceedings be borne by appellant-opponent 2 (Article 104(1) EPC, Article 16(1)(c) RPBA).

Order

For these reasons it is decided that:

1. Document O6A is admitted into the proceedings.

2. The case is remitted to the department of first instance for further prosecution.

3. The costs of the appellant-patent proprietor for the oral proceedings before the Board shall be borne by appellant-opponent 2.