T 1348/21 - Inadmissible requests and cost apportionment

Key points

• The Board held some requests inadmissible. The opponent requests a different apportionment of costs. 
• "The opponent requested a different apportionment of costs in its favour due to the patent proprietor's alleged abusive behaviour in regard to the submission of five new claim requests four days before the oral proceedings."
• "For abusive behaviour to be acknowledged, the patent proprietor would have had to have filed these claim requests not in pursuit of a legitimate aim, such as that the patent be maintained on the basis of one of these requests, but rather primarily to cause damage to the opponent. The burden of proof for an abuse of rights is on the person claiming it and such an abuse must be established without doubt (see J 14/19, Reasons 13.1). Persistently pursuing own interests in proceedings before the EPO does not as such amount to an abuse of procedure (T 2892/19, Reasons 5). Moreover, preparations for discussing the admittance and substance of late-filed submissions are part of the normal work that can be expected of any party and its representative (see T 1848/12, Reasons 2.1)."
• "In the case at hand, the opponent did not provide any proof as to the patent proprietor's possible intention to cause harm, nor is the Board aware of any such indication. The mere fact that the claim requests concerned were not admitted or allowed by the Board, or were possibly unlikely to be admitted or allowed, does not constitute any such indication. The Board also points out that it admitted auxiliary request 7-1, i.e. one of the claim requests concerned, into the appeal proceedings, as it considered its filing a legitimate reaction to the Board's observations in its preliminary opinion (see point 6.1 above)."
• "The Board therefore sees no reasons of equity which could justify diverging from the principle of Article 104(1) EPC whereby each party should bear the costs it has incurred."

EPO 

You can find the link to the decision and an extract of it after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t211348eu1

10. Request for a different apportionment of costs

The opponent requested a different apportionment of costs in its favour due to the patent proprietor's alleged abusive behaviour in regard to the submission of five new claim requests four days before the oral proceedings.

For abusive behaviour to be acknowledged, the patent proprietor would have had to have filed these claim requests not in pursuit of a legitimate aim, such as that the patent be maintained on the basis of one of these requests, but rather primarily to cause damage to the opponent. The burden of proof for an abuse of rights is on the person claiming it and such an abuse must be established without doubt (see J 14/19, Reasons 13.1). Persistently pursuing own interests in proceedings before the EPO does not as such amount to an abuse of procedure (T 2892/19, Reasons 5). Moreover, preparations for discussing the admittance and substance of late-filed submissions are part of the normal work that can be expected of any party and its representative (see T 1848/12, Reasons 2.1).

In the case at hand, the opponent did not provide any proof as to the patent proprietor's possible intention to cause harm, nor is the Board aware of any such indication. The mere fact that the claim requests concerned were not admitted or allowed by the Board, or were possibly unlikely to be admitted or allowed, does not constitute any such indication. The Board also points out that it admitted auxiliary request 7-1, i.e. one of the claim requests concerned, into the appeal proceedings, as it considered its filing a legitimate reaction to the Board's observations in its preliminary opinion (see point 6.1 above).

The Board therefore sees no reasons of equity which could justify diverging from the principle of Article 104(1) EPC whereby each party should bear the costs it has incurred.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

3. The request for apportionment of costs is refused.