T 0034/14 - Apportionment of costs

Key points

• The Board recalls that " an opposition division's decision on apportionment of costs is a discretionary one that should be overruled only if the board comes to the conclusion either that the first instance department exercised its discretion in accordance with the wrong principles or in an unreasonable way, and has thus exceeded the proper limits of its discretion (G 7/93; point 2.6)." 

T 0034/14 - link

Reasons for the Decision
Apportionment of costs

5. The opposition division decided to apportion costs against appellant 2.

5.1 This decision was based on the following sequence of events: in the opposition proceedings, appellant 2 filed a new document D17 two days before the oral proceedings scheduled for 18 April 2013. During these oral proceedings, the respondent requested that the oral proceedings be adjourned in order to have sufficient time to prepare a declaration and file experimental evidence if D17 was admitted into the proceedings. The opposition division decided to admit D17 into the proceedings and consequently adjourned the oral proceedings to 10 October 2013, as requested by the respondent.

5.2 In its decision, the opposition division essentially reasoned as follows: there had been no abuse of procedure by appellant 2, but its late filing of D17 was irresponsible and gave rise to unnecessary costs for the respondent. However, as one of the present inventors had co-authored D17, the respondent had been involved in writing it, and must therefore have known that it existed, and what was in it. In view of this, it was equitable for appellant 2 to bear only the respondent's travel and accommodation costs for attending the second oral proceedings held on 10 October 2013.

5.3 Appellant 2 requested that this decision be set aside, arguing that the respondent had been familiar with D17 well before the first oral proceedings, and its request for adjournment of the first oral proceedings had therefore not been justified.

5.4 The board does not agree. The respondent did not ask for an adjournment of the oral proceedings in order to familiarize itself with D17 but to have sufficient time to prepare a declaration or file experimental evidence in respect to the appellant's arguments relating to it. This was a justified request, since even if the respondent was familiar with D17 it did not need to file any submissions about it until it was brought into the proceedings by appellant 2. It was therefore perfectly reasonable for the opposition division to allow the respondent's request for adjournment, and in consequence to award costs against appellant 2.

Incidentally, an opposition division's decision on apportionment of costs is a discretionary one that should be overruled only if the board comes to the conclusion either that the first instance department exercised its discretion in accordance with the wrong principles or in an unreasonable way, and has thus exceeded the proper limits of its discretion (G 7/93; point 2.6).

5.5 Appellant 2 cited decisions T 330/88 and T 336/86, which however are not relevant to the present case:

5.5.1 In the case underlying T 330/88, a new document had been filed by the opponent during oral proceedings before the opposition division. After the oral proceedings, the proceedings were continued in writing. In subsequent appeal proceedings, the board held that the appellant (proprietor), who had requested an apportionment of costs, had had sufficient time to consider the late-filed document during the oral proceedings before the opposition division, which had lasted for two consecutive days. The board therefore rejected the appellant's (proprietor's) request for apportionment of costs. This is different from the present case, where there was not enough time during the oral proceedings to react properly to late-filed document D17.

5.5.2 In T 336/86, after the opponent had filed a new patent publication during the oral proceedings before the opposition division the proceedings were continued in writing. In the subsequent written proceedings, the proprietor requested the revocation of its patent and an apportionment of costs, since the oral proceedings could have been avoided if the opponent had submitted the new patent publication earlier. The board rejected the request for apportionment of costs basically on the grounds that the proprietor was also the holder of the late-filed patent. The board held that the failure of both parties to exercise all due care over this document had resulted in oral proceedings which proved to be superfluous and that in these circumstances it was not justified to award costs to either of the parties.

That case too is different from the present one because the new document was so highly relevant that the patent could no longer be defended, and the respondent (proprietor) actually requested its revocation. Hence, while it may be true that if the proprietor had exercised due care, it would have taken this document into account even before it was filed by the opponent, the same is not necessarily true in the present case.

5.6 The board therefore in the present case found that the opposition division's decision on costs was justified.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside as far as the opposition division had found that taking into account the amendments made by the patent proprietor during the opposition proceedings the patent and the invention to which it relates met the requirements of the Convention.

2. As regards the decision on apportionment of costs, the appeal of appellant 2 is dismissed.

3. The patent is revoked.