T 0258/13 - Apportionment of costs

Key points

• Withdrawal of a request for oral proceedings by a party in this opposition appeal, at 17:00 two days before, caused an apportionment of cost against that party.
• The apportionment is only for the costs for the professional representative, not for accompanying persons. " The Board points out, however, that for the oral proceedings only the presence of an authorized representative is necessary. The attendance or not of an accompanying person has no bearing on the conduct of the oral proceedings and is a matter of a deliberate choice from a party for which the other party need not be involved. To charge the appellant also with costs incurred by the accompanying person would contravene the principle of equity" 

EPO T 0258/13 - link

2. Apportionment of costs

2.1 The appellant withdrew its request for oral proceedings per telefax at 17:00 on 9 January 2017, i.e. only two days before the oral proceedings scheduled for 11 January 2017, de facto only one day in view of the lateness of the filing in the day (17:00).

In reaction, the respondent requested apportionment of costs pursuant to Article 104(1) EPC with two letters dated 10 January 2017, arguing that the appellant's request for the withdrawal of oral proceedings was filed in such a short notice that it resulted in unnecessary costs for the preparation of oral proceedings and for the cancellation of flights and accommodation for the authorized representative and the accompanying persons.

2.2 Article 16 RPBA dealing with costs provides, so far as relevant to the present case:

"(1) Subject to Article 104, paragraph 1, EPC, the Board may on request order a party to pay some or all of another party's costs which shall, without limiting the Board's discretion, include those incurred by any
(c) acts or omissions prejudicing the timely and efficient conduct of oral proceedings;...".

2.3 In case T 53/06, not published in OJ EPO, point 4 of the reasons, the deciding Board stated (see also T 2179/09, not published in OJ EPO, point 6 of the reasons):

"Article 104(1) EPC, referred to in Article 16(1) RPBA, contains the general power of the Opposition division to order, for reasons of equity, a different apportionment of costs from the norm in which each party bears its own costs. It is well-established by case-law that, regardless of which party requested oral proceedings and of whether a communication has been sent or not, every party summoned to oral proceedings has an equitable obligation to inform the board as soon as it knows it will not attend the oral proceedings and that, if a party fails both to respond to a communication and to attend oral proceedings, costs may be awarded against it (see generally "Case Law of the Boards of Appeal of the European Patent Office", 5th edition 2006, pages 585 to 587)" (now 8th edition 2016, IV.C.6.2.2(a)).
"In the present case the appellant requested oral proceedings "in case the board considers not to set the decision aside". As soon as it received the Board's summons to oral proceedings and communication of 26 October 2007, the appellant knew not only that oral proceedings would take place but also that the condition it had itself placed on its own request for oral proceedings had been fulfilled, since the communication clearly indicated that the Board's provisional opinion was that the decision under appeal would not be set aside. However, the appellant neither replied to the communication nor indicated at all, let alone as soon as it knew, that it would not attend oral proceedings. Since the respondent had, in the absence of any submissions from the appellant additional to those in the grounds of appeal, nothing to add to its own case in its reply to the grounds of appeal, the oral proceedings proved to be unnecessary."
"Accordingly it is clear that, as a result of the appellant's conduct, the oral proceedings were not only unnecessary but also an inefficient use of the time and effort of both the respondent and the Board. In those circumstances, an apportionment of costs in favour of the respondent is appropriate under Article 16(1)(c) RPBA. Since it is also clear that the appellant could have made its position known well in advance of the date appointed for the oral proceedings, and thereby not only spared the respondent and the Board unnecessary work but also allowed the date for the oral proceedings to be used for another pending appeal, such an apportionment of costs is also appropriate under Article 16(1)(e) RPBA."

2.4 The present Board can only fully concur with this reasoning in T 53/06 which is similarly applicable to the present case.

As a matter of fact, in the present case the appellant subsidiarily requested oral proceedings and knew with the Board's provisional opinion provided in the annex to the summons for oral proceedings of 16 November 2016 that they would take place and that the appeal would be dismissed taking into account the arguments submitted by the parties so far. The appellant has not filed any additional arguments subsequently and even confirmed its attendance to the oral proceedings with letter dated 9 December 2016, requesting simultaneous translation. It was therefore clear that oral proceedings had to be held and that the respondent, the Board and the interpreters needed to invest preparation time.

In this respect, the Board cannot follow the appellant's arguments that in the absence of the deciding persons due to Christmas holidays oral proceedings could not be withdrawn at an earlier point in time. Indeed, the appointed date for the oral proceedings was clearly stated in the summons and the appellant had sufficient time at its disposal before said Christmas holidays to work on the case and anticipate any plausible and foreseeable absence of the deciding persons. The respondent, which invested unnecessary time for the preparation, cannot be penalized for the appellant's conduct.

2.5 The Board cannot consider that the appellant's request for withdrawal of oral proceedings two days before the oral proceedings (de facto one day, see point 2.1 above) was notified "in good time" in accordance with the following stated in T 556/96, not published in EPO OJ, (see catchword and point 5 of the reasons):

"1. The equitable obligation of a party summoned to oral proceedings to inform the EPO that it will not attend (T 930/92) implies that the party reaches a decision and notifies it in good time, i.e. sufficiently in advance of the date of the oral proceedings to allow the Board to reconsider the need for oral proceedings, if necessary after having contacted the other parties summoned, and to give notice to them that the oral proceedings have been cancelled as a consequence.
2. Where a party informs the EPO and/or the other parties of its intention not to attend the oral proceedings so late that cancellation of the oral proceedings is no longer a feasible option, then, for the purposes of apportionment of costs, the party responsible is to be treated as if it had been absent without prior notice." (emphasis added by the Board).

The present Board concurs with this reasoning in T 556/96 and, hence, the appellant's request has to be treated as having been received so late that the respondent had already to be fully prepared, taking further into account the necessary travelling time during the day before the oral proceedings.

Accordingly, as a result of the appellant's conduct, the preparation for oral proceedings were not only unnecessary but also an inefficient use of the time and effort of the respondent, the Board and also the interpreters. In those circumstances, an apportionment of costs in favour of the respondent is appropriate under Article 16(1)(c) RPBA.

2.6 The Board points out, however, that for the oral proceedings only the presence of an authorized representative is necessary. The attendance or not of an accompanying person has no bearing on the conduct of the oral proceedings and is a matter of a deliberate choice from a party for which the other party need not be involved. To charge the appellant also with costs incurred by the accompanying person would contravene the principle of equity (Article 104(1) EPC, Article 16(1) RPBA).

Therefore, the cancellation costs of flights and accommodation for the accompanying person is to be borne by the respondent itself.

2.7 The Board notes with respect to the present decision on apportionment of costs that, although the appellant was not present at the oral proceedings, the principle of the right to be heard pursuant to Article 113(1) EPC is observed since that Article only affords the opportunity to be heard and, by absenting itself from the oral proceedings, a party gives up that opportunity (see the explanatory note to Article 15(3) RPBA cited in T 1704/06, not published in OJ EPO, see also the Case Law of the Boards of Appeal, 8**(th) edition 2016, III.B.2.7.3).

Order

For these reasons it is decided that:

1. The appeal is dismissed

2. The appellant shall bear the following costs incurred by the respondent for the preparation of the oral proceedings:

- cancellation costs of the flights and accommodation for the authorized representative only; and

- twelve hours preparation time for the authorized representative.