T 1045/19 - No apportionment of costs

Key points

• In this case, the appellant/patentee appealed the revocation of the patent and, shortly before the hearing, disapproved of the text of the patent.
• [The opponent's] request for a different apportionment of costs relates to costs arising due to having to respond to the [patentee's/  appellant's]  late change of case, being the withdrawal of the previously pending claim requests and the filing of replacement claim requests shortly before the scheduled oral proceedings.
• "the question of whether a different apportionment of costs is warranted is governed by Article 104(1) EPC which requires that, in order to find an exception to the rule that each party bears the costs it has incurred, "reasons of equity" must exist. It follows that the mere fact that an amendment of a party's appeal case is present does not mean that a different apportionment of costs must be ordered. It remains at the discretion of the board (see Article 16(1), second sentence, RPBA 2020) to order a different apportionment of costs taking into account the criterion of equity stipulated in Article 104(1) EPC."

• "The board considers that the late filing of claim requests alone (and the filing of a new document) does not, as such, justify such apportionment for reasons of equity. Instead, additional circumstances are needed for equity to dictate ordering a party to pay the other's costs because it had amended its case at a late stage (see T 1781/13, Reasons 14.2.1; T 467/15, Reasons 5.3)."

• "In the circumstances of the present case, the board does not consider a different apportionment of costs for reasons of equity to be warranted.  It is for the party requesting a different apportionment to put forward such additional circumstances and to demonstrate that they warrant an exception to the other above-mentioned rule that each party must bear its own costs. The party must show, for example, that the other party has neglected the level of care towards the requesting party that can be reasonably expected of it (see T 40/17, Reasons 5). The reasons put forward by respondent I are not sufficient in this respect."

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/t191045eu1.html

Costs (Article 104(1) EPC and Article 16(1), second sentence, (a) RPBA 2020)

6. Respondent I's request for a different apportionment of costs relates to costs arising due to having to respond to the appellant's late change of case, being the withdrawal of the previously pending claim requests and the filing of replacement claim requests shortly before the scheduled oral proceedings.

7. The appellant's submission of 9 December 2022 may indeed be considered an amendment of its appeal case within the meaning of Article 13(1) and (2) RPBA 2020 and would thus also fall under Article 16(1), second sentence, (a) RPBA 2020. However, the wording of Article 16(1) RPBA 2020 does not regulate in which cases a different apportionment of costs is justified; rather, it lists situations for which specific costs may be included in the apportionment. Indeed, the question of whether a different apportionment of costs is warranted is governed by Article 104(1) EPC which requires that, in order to find an exception to the rule that each party bears the costs it has incurred, "reasons of equity" must exist. It follows that the mere fact that an amendment of a party's appeal case is present does not mean that a different apportionment of costs must be ordered. It remains at the discretion of the board (see Article 16(1), second sentence,

RPBA 2020) to order a different apportionment of costs taking into account the criterion of equity stipulated in Article 104(1) EPC.

8. The board considers that the late filing of claim requests alone (and the filing of a new document) does not, as such, justify such apportionment for reasons of equity. Instead, additional circumstances are needed for equity to dictate ordering a party to pay the other's costs because it had amended its case at a late stage (see T 1781/13, Reasons 14.2.1; T 467/15,

Reasons 5.3). It is for the party requesting a different apportionment to put forward such additional circumstances and to demonstrate that they warrant an exception to the other above-mentioned rule that each party must bear its own costs. The party must show, for example, that the other party has neglected the level of care towards the requesting party that can be reasonably expected of it (see T 40/17, Reasons 5). The reasons put forward by respondent I are not sufficient in this respect.

9. In the circumstances of the present case, the board does not consider a different apportionment of costs for reasons of equity to be warranted.

Order