T 0169/14 - Apportionment of costs and OP

Key points

• In this opposition appeal case, the appellant (proprietor) informed the Board with a letter sent a few days before the oral proceedings, that it would not attend them. The Bord cancelled oral proceedings. The respondent requested that Board would order the appellant to pay its expenses for flight tickets.
• " In the board's view, there is an equitable obligation on every party summoned to oral proceedings to inform the EPO and the other party as soon as possible, once it has decided that it will not be attending or is withdrawing its request for them. Consequently, in cases where a party unduly delays its decision not to attend the oral proceedings, or the withdrawal of its request for them, or its communication of this to the board, an apportionment of costs in favour of the other party could be justified if the costs were directly caused by the fact that the notice was not filed in due time." 
• The Board does not order the apportionment of costs, mainly because the appellant had sent a copy of its letter to the respondent's attorney, and because it had included substantive arguments with its letter. 

EPO T 0169/14 -  link

Summary of Facts and Submissions

I. This case concerns an appeal filed by the patent proprietor (henceforth, the appellant) against the decision of the opposition division to revoke European patent []. [...]

IX. In a letter dated 10 November 2016, in response to the board's communication, the appellant provided further arguments, informed the EPO that he would not be attending the oral proceedings and withdrew his request for oral proceedings. The last line on page 3 of this letter reads as follows: "cc: Regimbau (Lyon office), Attn. [mr. X], Ref: OB0011 (by email)".

X. In a communication from the board dated 11 November 2016 and faxed to the parties the same day, the parties were informed that the oral proceedings scheduled for 16 November 2016 had been cancelled and that the proceedings would be continued in writing.

XI. In its letter dated 15 November 2016, the respondent submitted that it had incurred costs due to the late cancellation of the oral proceedings and requested that, pursuant to Article 16 RPBA, its representative's fees for preparing the oral proceedings before the board and his non-refundable travel expenses for the flight ticket be fully borne by the appellant. []

Reasons for the Decision

[] 2. Allowability of the appeal - claim 1 of the patent as granted - added subject-matter []

2.7 The board concludes that the ground for opposition pursuant to Article 100(c) EPC 1973 prejudices the maintenance of the patent as granted and, consequently, sees no reason to remit the case to the opposition division for further prosecution.

2.8 It follows that the appellant's main request is not allowable and, consequently, that the appeal is to be dismissed.

3. Apportionment of costs

3.1 After cancellation of the oral proceedings appointed for 16 November 2016, the respondent requested that, pursuant to Article 16 RPBA, its representative's fees for preparing them and his non-refundable travel expenses for the flight ticket, be fully borne by the appellant.

3.2 The respondent argued that these costs had been incurred due the fact that it was only by letter dated 10 November 2016 that the appellant informed the EPO that he would not be attending the oral proceedings and was withdrawing his request for them. Moreover, since Friday 11 November 2016 was a public holiday in France, only on 14 November 2016 had the respondent become aware of the appellant's withdrawal of that request. In addition, the respondent argued that the appellant's representative could have known this, since he had his place of business in the United Kingdom where Friday 11 November 2016 was also a public holiday. By the time the respondent was informed of the cancellation, however, its representative had already started the preparatory work for the oral proceedings and his non-refundable flight ticket had already been paid for.

In the respondent's view, the appellant had unduly delayed his decision not to attend the oral proceedings, the withdrawal of his request for them and his communication to the board, since the appellant had acknowledged receipt of the summons to oral proceedings already on 2 June 2016 and had informed the board accordingly only a few days before the scheduled date. The respondent also argued that there had been several earlier opportunities for the appellant to respond, e.g. by withdrawing his appeal in response to the board's communication stating that the patent had lapsed in all Contracting States or by taking a position on the rather negative preliminary opinion set out in the board's communication attached to the summons. The respondent took the view that an apportionment of costs in its favour was justified as the above-mentioned costs were directly caused by the fact that the appellant's notice had not been filed in due time before the oral proceedings.

3.3 Article 104(1) EPC provides that as a rule each party to the opposition proceedings bears its own costs. Departing from this principle requires special circumstances, such as improper behaviour, which make it equitable to award costs against one of the parties.

This provision applies equally to opposition appeal proceedings, by virtue of Article 111(1) EPC. Article 16(1) RPBA provides that, subject to Article 104(1) EPC, the board may on request order a party to pay some or all of another party's costs which without limiting the board's discretion include those incurred by any

(a) amendment pursuant to Article 13 RPBA to a party's case as filed pursuant to Article 12(1) RPBA;
(b) extension of a time limit;
(c) acts or omissions prejudicing the timely and efficient conduct of oral proceedings;
(d) failure to comply with a direction of the board;
(e) abuse of procedure.

3.4 According to Article 116(1) EPC 1973 and established jurisprudence, any party has a right to request oral proceedings. Nothing in the European Patent Convention prevents a party from withdrawing its request for oral proceedings at any stage of the proceedings. Therefore, the fact that an appellant withdraws its request for oral proceedings is not culpable conduct in itself, and cannot be a factor in assessing equity under Article 104(1) EPC (see also decisions T 91/99, point 8 of the reasons, and T 383/05, point 8 of the reasons).

3.5 However, the fact that the appellant filed notice of his intention that he would not to be attending the oral proceedings, and was withdrawing his request for them only one week before the scheduled date could possibly be seen as negligent or wilful conduct which has to be considered under Article 104(1) EPC.

3.6 In the board's view, there is an equitable obligation on every party summoned to oral proceedings to inform the EPO and the other party as soon as possible, once it has decided that it will not be attending or is withdrawing its request for them. Consequently, in cases where a party unduly delays its decision not to attend the oral proceedings, or the withdrawal of its request for them, or its communication of this to the board, an apportionment of costs in favour of the other party could be justified if the costs were directly caused by the fact that the notice was not filed in due time.

3.7 However, in the present case, the board does not see anything in the timing of the appellant's notice which amounts to culpable conduct which justifying a different apportionment of costs.

By the board's communication dated 11 November 2016 and faxed on the same day, the parties were informed that the oral proceedings appointed for 16 November 2016 had been cancelled. Thus this information was provided to the parties several working days before the scheduled date of oral proceedings.

The respondent submitted that, because 11 November 2016 was a public holiday in France, it was not until 14 November 2016 that it became aware of the appellant's withdrawal of his request for oral proceedings. However, in the board's view, it is doubtful whether the appellant can be held responsible for the fact that there was a public holiday in the EPO Contracting State where the respondent's representative has his place of business. Moreover, it appears from the appellant's letter dated 10 November 2016 (last line on page 3) that the respondent's representative had received a copy of that letter by e-mail on the same day (see point IX above) and was therefore aware of it before the public holiday (which was not contested by the respondent). In view of the foregoing, it appears irrelevant whether or not the appellant's representative could have known about the public holiday in France.

The board further notes that, in his letter dated 10 November 2016, the appellant submitted observations in reply to the board's preliminary opinion and requested that they be taken into consideration by the board in reaching its decision. It is clear from these submissions that the appellant sought a decision on the merits of the case. The respondent's argument that withdrawal of the appeal was a reaction to be expected from the appellant at an earlier stage is therefore not convincing.

If the board had found the appellant's new submissions admissible and convincing, oral proceedings would have had to take place in view of the respondent's conditional request for them. The board therefore considered whether there was a need to hear the respondent and whether the oral proceedings could be cancelled. As a result, the late cancellation of the oral proceedings did not result from the appellant's allegedly late-filed notice of his intention not to attend them and of withdrawal of his request for them, but from the board's opinion about the need to hear the respondent, which was reached only at that stage.

Additionally, there seem to be no facts on file indicating that the appellant unduly delayed his notice or conducted himself in clearly improper or irresponsible manner.

3.8 Under these specific circumstances, the board considers that there was no culpable conduct on the part of the appellant which could justify a different apportionment of costs under Article 104(1) EPC. Therefore, the respondent's request for a different apportionment of costs must be refused.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request of the respondent for a different apportionment of costs is refused.