T 3261/19 - Reversal apportionment of costs

Key points

•  The opponent appeals against the rejection of the opposition. The OD had also ordered the opponent to pay costs, i.e. a cost apportionment, for the costs made by the patentee for attending the oral proceedings before the OD (decision of the OD here).
• Rule 97 is no issue in the case at hand.
• The Board overturns the cost apportionment. The OD had based the decision on the fact that the opponent had announced very late that it would not attend the oral proceedings.
• The Board in translation: "However, an apportionment of costs does not constitute a sanction for impolite behavior by a party, but can be ordered if the behavior of one party incurs avoidable costs for the other party (case law of the Boards of Appeal, III.R.2.). As far as the unannounced non-participation in oral proceedings is concerned, it follows from settled case-law that this can lead to an apportionment of costs in favor of the participating party if the oral proceedings were clearly superfluous due to the non-participation of the other party (Case Law of the Boards of Appeal, III. R.2.2.1)."
• The patentee argues that in the case at hand, the oral proceedings were superfluous in the absence of the opponent. The preliminary opinion of the OD was indeed entirely in favor of the patentee. However, the opponent had filed a new document D6 after the preliminary opinion. 
• The Board: "However, the Board is of the opinion that, in view of the opponents' submission of 18 July 2019, in which, among other things, D6 and a corresponding objection under Article 56 EPC were mentioned for the first time, the holding of the oral proceedings could not be considered superfluous, because a preliminary opinion of the opposition division on the supplementary and partly new submissions of the opponents was not available before the oral proceedings. Therefore, prior to the hearing, the patent proprietor could not trust that the opposition division would decide in its favor according to the preliminary opinion of January 4, 2019. For this reason, it was objectively to be assumed that the patent proprietor would have appeared at the hearing even if the opponents were absent. Accordingly, the omission of a timely notification of the non-appearance does not seem to be causal for the presence of the patent proprietor or her representative in the oral hearing, including the associated costs. Under these circumstances, it also does not seem frivolous that the opponent did not announce its non-appearance in good time."
• The case seems to imply that an opponent that announces very late that it will not attend oral proceedings, should additionally cite a new citation as prior art, but I'm not sure if that is a correct result.
• It may be important that the Board in fact finds D6 to be sufficiently relevant and decides to overturn the decision of the OD to hold D6 inadmissible.
• It seems that the OD had overlooked a paragraph in D6. It may be asked if the absence of the opponent during the oral proceedings could have contributed to the OD overlooking a part of D6. 

EPO T 3261/19 -

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t193261du1.html

Machine translation

Reasons for decision

1. Decision without oral hearing

Such a decision is possible because both parties have withdrawn their requests in this regard and the Chamber sees no reason to schedule oral proceedings ex officio.

2. Allocation of costs (Article 104(1) EPC)

The board does not consider the opposition division's decision to order the opponent to pay the costs incurred by the patent proprietor in connection with its participation in the oral proceedings to be reasonable for the following reasons.

It is undisputed that the opponent did not attend the oral proceedings without notifying it in advance. In this context, it should be noted that although the statement of grounds of appeal gives various reasons why the appellant decided not to attend the hearing, no reasons are given for not informing the patent proprietor and the division in good time. According to established case-law, such behavior is unprofessional and does not comply with the elementary requirements of courtesy (Case Law of the Boards of Appeal, III.R.2.2.1).

However, an apportionment of costs does not constitute a sanction for impolite behavior by a party, but can be ordered if the behavior of one party incurs avoidable costs for the other party (case law of the Boards of Appeal, III.R.2.). As far as the unannounced non-participation in oral proceedings is concerned, it follows from settled case-law that this can lead to an apportionment of costs in favor of the participating party if the oral proceedings were clearly superfluous due to the non-participation of the other party (Case Law of the Boards of Appeal, III. R.2.2.1). Accordingly, the patent proprietor also submits that, in the light of the clear preliminary opinion of the opposition division, the oral proceedings could have been canceled

However, the Board is of the opinion that, in view of the opponents' submission of 18 July 2019, in which, among other things, D6 and a corresponding objection under Article 56 EPC were mentioned for the first time, the holding of the oral proceedings could not be considered superfluous, because a preliminary opinion of the opposition division on the supplementary and partly new submissions of the opponents was not available before the oral proceedings. Therefore, prior to the hearing, the patent proprietor could not trust that the opposition division would decide in its favor according to the preliminary opinion of January 4, 2019. For this reason, it was objectively to be assumed that the patent proprietor would have appeared at the hearing even if the opponents were absent. Accordingly, the omission of a timely notification of the non-appearance for the presence of the patent proprietor or her representative in the oral hearing, including the associated costs, should not have become causal. Under these circumstances, it also does not seem frivolous that the opponent did not announce its non-appearance in good time.

For these reasons, the board comes to the conclusion that the apportionment of costs ordered by the opposition division is not equitable.