T 0101/17 - The costs of inadmissible requests

Key points

• The Board considers the claims as granted to be not novel over D3 and does not admit the auxiliary requests. The novelty attack was already in the notice of opposition, and the OD had considered the claims to be not novel in the preliminary opinion and in the impugned decision. The patentee appeals and auxiliary requests are filed with the Statement of grounds. The Board concludes that the requests should have been filed in the first instance proceedings and does not admit them (Article 12(4) RPBA 2007).
• The opponent requests an apportionment of costs. 
• “The respondent [opponent] submitted that although the auxiliary requests were found inadmissible, it had nonetheless been necessary to prepare for the scenario that they would be admitted and to subsequently address them content-wise. This took the representative a total of 35 hours. Such time and expense could have been avoided had the appellant-proprietor refrained from filing these requests and restricted its case to a defence of the claims as granted (as would have been the proper thing to do in the circumstances).”
• The Board does not grant that request. The Board cited T1848/12: “Preparations for discussing the admission of late-filed documents into the proceedings during the opposition-appeal proceedings and, if they are admitted, preparations for discussing their relevance in respect of the patentability of the claimed subject-matter are part of the normal work that can be expected of any party to the proceedings and/or its representative in opposition-appeal proceedings.”
• I note that T1848/12 does not say that ‘preparations for discussing their relevance in respect of the patentability of the claimed subject-matter’ are ‘part of the normal work’ for inadmissible requests. T1848/12  says so explicitly only for requests that are admitted.
• I'm also not sure if the remark in T1848/12 applies to the vexatious filing of requests (though the opponent does not seem to have argued that the filing of the requests in the present appeal was vexatious or an abuse of procedure, though see below).
• The present Board adds that: “The Board further observes that in order to establish any causal link between the respondent's [opponent's] expenses and the appellant-proprietor's behaviour, the respondent [opponent] would have to show that it was particularly the belated filing of requests that caused the expense rather than the filing of requests as such. As it was the appellant's [sic, I think ' opponent'] argument that the filing of the auxiliary requests in appeal (rather than at the stage of opposition) was abusive and improper, a comparison between timely and belated filing of the requests would be necessary in order to establish causality of damage in the form of attorney's fees.”
• In my view, the comparison could more logically be made to the patentee not filing the inadmissible requests in appeal. If we assume that filing the requests in the appeal stage was unreasonable because they were clearly inadmissible, it can also be said that a diligent patentee would have refrained from filing such obviously inadmissible requests. For Article 12(4) RPBA 2007 we assume that the patentee diligently (or at least consciously) decided to not file the requests before the OD, but the present Board assumes for Art.104 that a diligently acting patentee would have filed the requests. 
• With the present Board's analysis, the late filing of (numerous) requests (or documents) appears to be a rather low-risk strategy, even if the submissions are obviously inadmissible, with clear advantages (distracting and burdening the opponent) and few disadvantages (perhaps that the Boards holds all requests inadmissible whereas they would have admitted some if only few AR's were filed). 

EPO T 0101/17 -  link

4.3 In light of the foregoing approach that the Board endorses, it might be a convenient moment to take a look at the course of opposition proceedings in this case.

Already the notice of opposition alleged a lack of novelty of the patent as granted over document D3. In its annex to the summons to oral proceedings, the opposition took the provisional view that "the subject matter of independent claim 1 of the patent-in-suit lacks novelty also over D3", amongst other documents that it also saw as novelty destroying. The decision under appeal confirmed the finding that "the subject matter of claim 1 is not novel over D3". When the opposition division came to this conclusion during oral proceedings, the protocol notes that "the chairman gave the opportunity to the patent proprietor to file further requests. The patent proprietor confirmed that it did not wish to file any further request." It was only at the stage of appeal that the appellant-proprietor decided to file requests meant to overcome a potential lack of novelty of the patent as granted, and requested that, should the Board find any of these requests novel and compliant with Art. 123(2) EPC, it remit the case to the department of first instance for further examination of inventive step issues.

4.4 The earliest opportunity for the appellant-proprietor to submit an auxiliary request to remedy a potential lack of novelty would have been in response to the opposition, then again in response to the summons to oral proceedings (that were issued more than half a year prior to oral proceedings), and finally during oral proceedings. The appellant-proprietor has taken none of these opportunities and rather decided to create a fallback position only in the subsequent tier of proceedings, namely on appeal, with the express request to remit the case should the Board find any of the newly filed requests novel.

4.5 In the case at issue, the Board notes that the objection of lack of novelty over document D3 had been in the procedure already since the filing of the opposition, and had been addressed by the opposition division in its preliminary opinion just as in its decision in no uncertain terms. And just as the framework of facts and arguments of the novelty objection has remained unchanged throughout the opposition proceedings, the appellant-proprietor has been equally consistent in restricting its case to defending the patent as granted without providing any fallback positions by filing auxiliary requests. A patentee is perfectly entitled to do so where it relies solely on the view that the opponent has not proven its case. However, if the circumstances are unchanged and the patentee only in the appeal phase changes track and files auxiliary requests that are meant to address what it deliberately chose not to address in first instance, then by so doing it effectively forces the Board to either decide for the first time what should have been decided in first instance, or to delay proceedings by a remittal that could very well have been avoided by a timely filing of auxiliary requests.

4.6 While it can be left open at which occasion it would have been incumbent to file an auxiliary request meant to address the novelty objection (in response to the opposition, in response to the preliminary opinion of the opposition division or when invited to do so a the oral hearing), the appellant-proprietor took none of these opportunities and for reasons of equity in appeal is restricted to defending the patent in unamended form. In this regard, no decision is required regarding the respondent's further arguments that the auxiliary requests are not convergent and ill-reasoned.

4.7 For the above reasons, the Board decided not to admit any of the auxiliary requests filed in appeal.

5. Apportionment of costs

5.1 Art. 104 (1) EPC which also applies to subsequent proceedings in appeal makes it a principle that "each party to the opposition proceedings shall bear the costs it has incurred". The respondent has however requested a different apportionment of costs for the reason that the filing of auxiliary requests on the stage of appeal amounted to an abuse of procedure.

5.2 The respondent submitted that although the auxiliary requests were found inadmissible, it had nonetheless been necessary to prepare for the scenario that they would be admitted and to subsequently address them content-wise. This took the representative a total of 35 hours. Such time and expense could have been avoided had the appellant-proprietor refrained from filing these requests and restricted its case to a defence of the claims as granted (as would have been the proper thing to do in the circumstances).

5.3 The Board sees no reason for calling the factual basis of these submissions into question. However, it appears that even in such circumstances, case law of the Boards of Appeal does not support a different apportionment of costs, see the above cited decision T 1848/12, point 2 of the reasons:

"2. Apportionment of costs
2.1 Appellant I requests apportionment of costs for the fact that it had to review and consider documents D15 to D28, irrespective of their (non-)admission into the present proceedings. It considers that these documents should have been filed in due time during the opposition proceedings.
2.2 The board cannot grant this request. Preparations for discussing the admission of late-filed documents into the proceedings during the opposition-appeal proceedings and, if they are admitted, preparations for discussing their relevance in respect of the patentability of the claimed subject-matter are part of the normal work that can be expected of any party to the proceedings and/or its representative in opposition-appeal proceedings.
2.3 Therefore, appellant I's request for apportionment of costs is refused (Article 104(1) EPC)."

5.4 The Board concurs with this approach as an application of the above-mentioned principle that each party bears its own costs. The Board further observes that in order to establish any causal link between the respondent's expenses and the appellant-proprietor's behaviour, the respondent would have to show that it was particularly the belated filing of requests that caused the expense rather than the filing of requests as such. As it was the appellant's argument that the filing of the auxiliary requests in appeal (rather than at the stage of opposition) was abusive and improper, a comparison between timely and belated filing of the requests would be necessary in order to establish causality of damage in the form of attorney's fees.

5.5 However the Board fails to see what additional expenses the respondent had incurred by preparing for a discussion of these requests at the stage of appeal rather than at the stage of opposition, other than for the additional discussion on the admissibility of these requests (which might have been unnecessary had they been filed in a timely manner). As a discussion on the admissibility of requests is a not uncommon occurrence in proceedings in general, this can hardly be credited with separately identifiable expenses. It is at least at this hurdle that the respondent's case fails and the request for a different apportionment of costs has to be refused.

6. The appellant-proprietor's main request is not allowable and its remaining requests have not been admitted into the proceedings. Therefore, the Board must dismiss the appeal.

Order

For these reasons it is decided that:

The appeal is dismissed.