T 1310/18 - Apportionment of costs

Key points

• The Board: "The appellant shall bear the costs incurred by the respondent for the preparation of the oral proceedings, namely fourteen hours' preparation time for the authorised representative."
• "On 9 December 2021, the day before the scheduled date, in an electronic letter that was received at 16:34, the appellant informed the board that it would not be participating in the oral proceedings and requested that a decision be taken on the basis of the state of the file. No reason was given for this change of mind. " "Furthermore, the appellant did not inform the respondent."
• "As noted by the respondent, the board's preliminary opinion on the case was wholly positive in favour of the respondent. None of the appellant's objections was considered convincing, and the opinion was expressed that the appeal would be dismissed. "
• "in the absence of any indication from the appellant that it was not continuing to argue the case, it was necessary for the proprietor's representative, as well as for the board, to spend time properly preparing for the oral proceedings immediately before they took place. It is noted that the respondent had raised numerous lines of attack in its grounds of appeal, referring to multiple documents. Therefore a considerable effort was required to prepare for the case properly. "
• " It is therefore clear that the appellant's conduct resulted in an inefficient use of the time of both the respondent and the board. "
• "In these circumstances an apportionment of costs in favour of the respondent is appropriate under Article 104(1) EPC and Article 16(1)(c) RPBA."

EPO T 1310/18 

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

epo.org/law-practice/case-law-appeals/recent/t181310eu1.html

9. Apportionment of costs

9.1 The appellant had requested that oral proceedings be held before the board, on an auxiliary basis. A summons to oral proceedings scheduled to take place on 10 December 2021 was issued. In a communication dated 12 February 2021, the board informed the parties of its preliminary opinion on the case, i.e. that the appeal appeared likely to be dismissed.

9.2 By letters dated 11 November 2021 and 16 November 2021, respectively, the parties informed the board that they would participate in the oral proceedings via videoconference. Interpretation was requested by both parties and the board arranged for it.

9.3 On 9 December 2021, the day before the scheduled date, in an electronic letter that was received at 16:34, the appellant informed the board that it would not be participating in the oral proceedings and requested that a decision be taken on the basis of the state of the file. No reason was given for this change of mind. On the same date and following receipt of the above electronic letter, the board informed the parties that the oral proceedings were cancelled.

9.4 On 10 December 2021 the respondent requested apportionment of the costs incurred for the preparation for the oral proceedings which had not taken place.

9.5 According to Article 104(1) EPC and Article 16(1) RPBA 2020, each party to the opposition proceedings shall bear the costs it has incurred, unless the opposition division or the board, for reasons of equity, orders a different apportionment of costs.

9.6 A party which has been summoned to oral proceedings and does not wish to attend them has a duty to notify the board and any other party to the proceedings of this fact, as soon as possible: see Case Law, section III.C.5.3.

9.7 In the present case, the appellant informed the board that it did not intend to attend the oral proceedings, and that it expected a decision to be issued in writing, only in the late afternoon of the eve of the oral proceedings. Furthermore, the appellant did not inform the respondent.

9.8 As noted by the respondent, the board's preliminary opinion on the case was wholly positive in favour of the respondent. None of the appellant's objections was considered convincing, and the opinion was expressed that the appeal would be dismissed. In fact, as soon as it became clear that the appellant was not attending the oral proceedings, the board cancelled them, deeming them not necessary.

9.9 The preliminary opinion of the board was issued well in advance of the oral proceedings (10 months prior to the scheduled date), giving the appellant ample time to review the case and to consider how it wished to proceed.

9.10 The appellant's request that oral proceedings be held by videoconference and the request for interpretation, dated 11 November 2021, gave the impression that it was intending to attend the oral proceedings and defend its case. Although the board's preliminary opinion was favorable to the respondent, in the absence of any indication from the appellant that it was not continuing to argue the case, it was necessary for the proprietor's representative, as well as for the board, to spend time properly preparing for the oral proceedings immediately before they took place. It is noted that the respondent had raised numerous lines of attack in its grounds of appeal, referring to multiple documents. Therefore a considerable effort was required to prepare for the case properly.

9.11 It is therefore clear that the appellant's conduct resulted in an inefficient use of the time of both the respondent and the board. The appellant's request for interpretation, which was arranged by the board but turned out to be unnecessary, resulted in a further waste of office resources.

9.12 In these circumstances an apportionment of costs in favour of the respondent is appropriate under Article 104(1) EPC and Article 16(1)(c) RPBA. See also decision T 258/13, reasons, points 2.1 to 2.7.

9.13 The respondent declared that two full days of preparation, namely 14 hours, were necessary for the respondent's representative to properly prepare for the oral proceedings. The respondent requested that the costs incurred for this preparation be apportioned. The board considers that, in view of, inter alia, the number of objections raised and the number of pieces of evidence referred to by the appellant, the respondent's request is reasonable and therefore is to be granted.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The appellant shall bear the costs incurred by the respondent for the preparation of the oral proceedings, namely fourteen hours' preparation time for the authorised representative.