T 2024/20 - Appeal against cost apportionment

Key points

•  This is an appeal regarding the apportionment of costs. Well, more precisely, against a decision of the OD under Rule 88(3) EPC to fix the costs.
• The representative of the patentee had forgotten the oral proceedings (or at least said so) and did not attend them (they were held in The Hague). The patent was revoked, with an apportionment of costs against the opponent, for the costs of the 4 opponents for the oral proceedings. The patentee did not appeal that decision.
• The formalities officer of the OD then fixed the costs under Rule 88(2) with an order of 14.02.2020 That order is, however, not visible in the online file.
• The patentee then requested a decision of the OD. The OD essentially maintained the order.
• The patentee filed an appeal against the OD's decision. The appeal is admissible; the amount of costs exceeded the appeal fee - by far, the total is about 24k EUR (Rule 97(2)).
•  The Board:  "there is no reason to doubt that the other costs listed (22.5 hours of preparation) were necessary to prepare for the oral proceedings in view of the number of opponents and documents and filings forming part of the proceedings opposition. Even if some of these documents and writings had probably already been studied at an earlier stage of the procedure, it is well known that good preparation for oral proceedings requires an in-depth study of the case, which implies time significant preparation. The board therefore accepts that opponent 2's preparation costs amount to EUR 6251.77." 
• " Opponent 2 indicated a preparation time of 22.5 hours and the Opponent 3 of 20.5 hours, which is certainly different from the number of hours indicated by Opponent 4, but still considerably higher than the day of preparation argued by the applicant. However, it is well known that depending on the importance of the same case for one or the other party, the time invested in preparing for oral proceedings may vary. The board has no concrete indications to cast doubt on the accuracy of the figures provided by opponent 4. Therefore, taking into account opponent 4's travel expenses, the appellant must reimburse ( 1299.27 + 9306)= 10605.27 EUR to opponent 4." 
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EPO 

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/t202024fu1.html

machine translation

2. Analysis of the appeal

2.1 The appeal concerns the decision of the Opposition Division fixing the costs of the opposition proceedings under Rule 97(2) EPC.

2.2 The appeal cannot relate to the apportionment of the costs of the opposition proceedings. The Applicant's Main Request and Auxiliary Request 1 are therefore not allowable, given that they do not contain all the costs forming part of the decision on the apportionment of costs and that the Applicant has not appealed against this decision dated 12 July 2018. This decision has become final (see also T 161/17, Reasons 2).

2.3 Therefore, the board can only verify whether the fixing of the amount of costs corresponds to the apportionment of costs and whether the presumption of costs is established (Rule 88(2) EPC).

2.4 The Opposition Division has decided that the following costs are to be paid by the Licensee:

- preparation of the oral proceedings

- travel to The Hague, for the oral proceedings

- hotel night before the oral proceedings

2.5 In the decision fixing the amount of costs (contested decision), the Opposition Division does not differentiate between the preparation for the oral proceedings and the participation in the oral proceedings. It appears from the supporting documents submitted by the parties that a difference exists between preparation and participation. The Opposition Division only awarded the preparation costs and not the participation costs. It may be that the intention of the Opposition Division was to include participation costs, but this is not clear from the decision. This difference (between the preparation and participation costs) was indeed present in the communication on the setting of the costs of February 14, 2020 (see point II.1), but is no longer found, for unknown reasons, in the decision making the subject of this appeal. The only conclusion that can be deduced from the decision is that the costs of preparing the oral proceedings are to be reimbursed, whereas the costs of participation are not. Speculation that the opposition division wanted to implicitly include the participation costs and that it had only misspoken in its decision cannot justify taking a decision contrary to the text of the contested decision.

2.6 The complainant argued that one day was sufficient to prepare for the oral proceedings. However, this opinion is in disagreement with all the information and supporting documents submitted by the opponents (see below). Moreover, there is nothing to show that a day's work would have made it possible to prepare for the oral proceedings in the present case, this opinion of the applicant being based only on a presumption. Taking into account the size of the file, the date of the owner's response to the oppositions, the preliminary opinion of the opposition division (February 2017), the date of the oral proceedings (30 May 2018) and the time that elapsed between the two, it seems that one day's work is not enough to become familiar with the file again and especially to prepare the file diligently for the oral proceedings. This is why the board cannot accede to the appellant's requests containing fixed costs corresponding to one day (7 hours) of preparation (second to fourth auxiliary requests).

2.7 Considering the letter of October 24, 2019 from Opponent 2 containing details of the travel expenses and the expenses of the Opponent's agent, it is obvious that the expenses of May 30 and 31, 2018 cannot relate to the preparation of the oral proceedings which took place on May 30, 2018. These costs (1074.28 + 572.95 = 1647.23 ¤) are therefore not payable by the applicant. However, there is no reason to doubt that the other costs listed (22.5 hours of preparation) were necessary to prepare for the oral proceedings in view of the number of opponents and documents and filings forming part of the proceedings opposition. Even if some of these documents and writings had probably already been studied at an earlier stage of the procedure, it is well known that good preparation for oral proceedings requires an in-depth study of the case, which implies time significant preparation. The board therefore accepts that opponent 2's preparation costs amount to ¤6251.77. Taking into account travel and accommodation costs of ¤576, the applicant must therefore reimburse 6251.77+576=6827.77¤ to opponent 2.

2.8 Opponent 3's letter of 21 January 2019 indicates in the appendix an amount of 7590 ¤ corresponding to several tasks, one of which is the preparation for the oral proceedings. With the letter of June 16, 2022, Opponent 3 submitted more details of the costs ("Detail Transaction"). The applicant disputes the admission of this plea. However, this information had been submitted in response to the board's Art. 15(1) RPCR 2020 notice which explicitly contained an invitation to Opponent 3 to submit further details of costs. This is why there are exceptional reasons justifying the taking into account of these means at this stage of the procedure (article 13(2) RPCR 2020).

The study of these data shows that only the costs dated May 21 to 30, 2018 can be considered as part of the preparation, with the exception of 1.75 hours for the participation in the oral proceedings. The other costs listed in the document relate to activities that took place long before or after the oral proceedings. In all (2 + 1 + 3.5 + 12 + 3.8 - 1.75) = 20.55 hours are to be considered as preparation time for the oral proceedings, which is very close to the 22.5 hours billed by the opponent 2. This is equivalent to (20.55*330)= ¤6781.5. Taking into account opponent 2's travel expenses of 425.6 ¤, the applicant must reimburse (6781.5 + 425.6) = 7207.1 ¤ to opponent 3 which is identical to the auxiliary request of the opponent 3.

2.9 The letter dated 10 May 2019 from Opponent 4 indicates an amount of 9306¤ for the preparation of the oral proceedings and an amount of 594¤ for the participation in the oral proceedings. Given that the Board considers that the fixing of costs does not include participation in the oral proceedings, the amount of ¤594 is not payable by the applicant.

The applicant also argues that the amount of ¤9306 is too high, because it is not sufficiently justified by additional information, especially since 30 hours of preparation seems exaggerated. The board disagrees with this argument of the appellant and has no reason to doubt the correctness of the data provided by opponent 4. Opponent 2 indicated a preparation time of 22.5 hours and the Opponent 3 of 20.5 hours, which is certainly different from the number of hours indicated by Opponent 4, but still considerably higher than the day of preparation argued by the applicant. However, it is well known that depending on the importance of the same case for one or the other party, the time invested in preparing for oral proceedings may vary. The board has no concrete indications to cast doubt on the accuracy of the figures provided by opponent 4. Therefore, taking into account opponent 4's travel expenses, the appellant must reimburse ( 1299.27 + 9306)= 10605.27 ¤ to opponent 4.

2.10 This submission therefore corresponds to the complainant's fifth auxiliary request. Opponent 4 argued that this request was submitted late and that there were no exceptional circumstances to take it into account (Article 13(2) RPCR 2020). It is true that this request was only submitted at the start of the oral proceedings and that Article 13(2) RPCR 2020 applies. However, the board had already explicitly indicated in the communication drawn up in accordance with Article 15(1) RPCR 2020 that the costs of participation in the oral proceedings were not payable by the appellant. The appellant's fifth auxiliary request is therefore considered to be a codification of the board's preliminary opinion and therefore an adequate response to that opinion. This is why the chamber takes it into consideration.

Order

For these reasons, it is decided as follows

1. The impugned decision is set aside.

2. The Applicant shall reimburse ¤6827.77 to Opponent 2, 7207.10¤ to Opponent 3 and 10605.27¤ to Opponent 4.