T 1556/14 - Decision on cost apportionment

 Key points

• In this post a decision of a Board of Appeal, but not on the appeal. The OD had decided to maintain the patent in amended form, both Patentee and Opponent 1 appealed. With letter 09.08.2019, patentee withdrew its appeal, disapproved the text and requested revocation of the patent. The Board held oral proceedings on 12.08.2020 in the absence of the opponents (but in the presence of patentee) revoking the patent. 
• “By letter dated 15 August 2019, appellant II (Opponent 1) requested that costs be awarded against appellant I (Patentee) for the time spent preparing for the oral proceedings and for non-refundable travel costs (apportionment of costs).”
• As held in T765/89, the Board has “inherent original jurisdiction to consider requests made to it in matters arising out of or in connection with the former appeal procedure”
• The Board: “Where [a request for cost apportionment] cannot be submitted before termination of the proceedings, for example when the only appeal is withdrawn and the timing of that withdrawal or other related circumstances are the alleged grounds for requesting apportionment of costs, the request must be accepted as being admissible despite being submitted after termination of the proceedings. Decision T 765/89, to which [opponent 1] referred, seems to concern such a situation.”
• The Board: “in the case in hand the board is not convinced that appellant II was unable to file a request for apportionment of costs prior to the termination of the proceedings on 12 August 2019. Appellant II's representative was made aware of appellant I's letter of 9 August 2019 at 20:30 that day. It decided not to attend the oral proceedings and could therefore also have decided to file a request for apportionment of costs over the weekend, even if it had not been possible to consult appellant II. ”
• The present Board: “Under Rule 88(1) EPC, apportionment of costs is to be dealt with in the decision on the opposition. The rule implies that the request for apportionment is submitted before that decision is taken”. 
• The request for cost apportionment is rejected as inadmissible.
• Opponent 1 received Patentee's letter on Friday 9 August at 20:30 (the EPO at 21:13 CEST through online filing, link). The oral proceedings were held on Monday 12 August closing at 09:10 according to the minutes of the oral proceedings. I'm not sure what the Board means with filing a request 'over the weekend' and if any request filed on Monday 08:30 using e.g. fax would have effectively reached the Board before Monday 09:10. 
• I note that the minutes of the oral proceedings do not appear to acknowledge the withdrawal of Patentee's appeal by letter of Friday 20:30, e.g. Patentee is simply referred to as Appellant I in the minutes.
  
• T 765/89: “In the exercise of its inherent original jurisdiction to consider requests made to it in matters arising out of or in connection with the former appeal procedure, the Board still has to decide on the Respondents' requests to impose on the Appellants the costs for the preparations made in view of oral proceedings”. 
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• Of note: “In the case in hand the board ordered oral proceedings to be held on 12-14 August [sic!] 2019”. 

EPO  T 1556/14.

https://www.epo.org/law-practice/case-law-appeals/recent/t141556eu2.html

(decision text omitted)