T 0749/19 - Appeal fee reimbursement

Key points

• Rule 103 EPC is a gift that keeps giving (for text book authors).
• This time: the opponent gets a 25% refund of the appeal fee without withdrawing its request for oral proceedings and without withdrawing its appeal.
•  "The proprietor's indication that it would take no active part in the appeal proceedings, implies that the proprietor withdrew its request for oral proceedings "
• "in view of the conclusion that the patent must be revoked, the condition for the opponent's auxiliary request for oral proceedings does not arise."
• "Consequently, this decision is being issued on the basis of the parties' written submissions."
• "Both conditions of Rule 103(4)(c) EPC, that "any request for oral proceedings is withdrawn ..." and "no oral proceedings take place", are met"
• "It makes not difference that the withdrawing party and the appealing party are not the same (T488/18, reason 8)."
• The Board here seems to interpret "any request for oral proceedings"  as "at least one party withdraws its request for oral proceedings".
• The Board does not comment on T777/15 and T795/19, which came to the opposite conclusion, i.e. that the appellant must timely withdraw its own request for oral proceedings to obtain the partial reimbursement.
• " It also makes no difference that the withdrawal of the proprietor's request for oral proceedings was made prior to a "notification of the communication issued by the Board in preparation for the oral proceedings", or even of a summons. The Board shares the opinion expressed in T2361/18 at points 3.2 and 3.3, that the "within one month" of Rule 103(4)(c) EPC, rather than defining a time period starting with the notification of the communication, defines an "end point" for the withdrawal of the request for oral proceedings, if partial reimbursement of the appeal fee is to be obtained."
• "Consequently, the opponent's appeal fee is to be reimbursed at 25%."
• 
  

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/t190749eu1.html

6. As all the proprietor's requests are either inadmissible or unallowable, the patent must be revoked.

7. The proprietor's indication that it would take no active part in the appeal proceedings, implies that the proprietor withdrew its request for oral proceedings (Case Law of the Boards of Appeal, 10th ed., III. C.4.3.1). This was pointed out in paragraph 24 of the Board's communication.

8. Additionally, in view of the conclusion that the patent must be revoked, the condition for the opponent's auxiliary request for oral proceedings does not arise.

9. Consequently, this decision is being issued on the basis of the parties' written submissions.

10. Both conditions of Rule 103(4)(c) EPC, that "any request for oral proceedings is withdrawn ..." and "no oral proceedings take place", are met (Case Law of the Boards of Appeal, 10th ed., III. C.4.3.4).

11. It makes not difference that the withdrawing party and the appealing party are not the same (T488/18, reason 8).

12. It also makes no difference that the withdrawal of the proprietor's request for oral proceedings was made prior to a "notification of the communication issued by the Board in preparation for the oral proceedings", or even of a summons. The Board shares the opinion expressed in T2361/18 at points 3.2 and 3.3, that the "within one month" of Rule 103(4)(c) EPC, rather than defining a time period starting with the notification of the communication, defines an "end point" for the withdrawal of the request for oral proceedings, if partial reimbursement of the appeal fee is to be obtained.

13. Consequently, the opponent's appeal fee is to be reimbursed at 25%.

Order

For these reasons it is decided that:

1. The decision is set aside.

2. The patent is revoked.

3. The opponent's appeal fee is reimbursed at 25%.