T 0617/20 - Request apportionment of costs after withdrawal of appeal

Key points

• If the proprietor withdraws the appeal, can the opponent request a cost apportionment under Art. 104 ? Is it a problem that the withdrawal of the sole appeal is seen as automatically terminating the procedure.
•  "The Board holds that the admissibility of the request for apportionment of costs need not be strictly tied to those procedural events that could be seen as the closure of the appeal proceedings. There are two such events that lend themselves as the identifiable end point of the proceedings. First, the withdrawal of the appeal is going to automatically terminate the substantive appeal proceedings, without any additional action of the Board. The other possibility is the usually later effected formal closure of the appeal proceedings, where the Board takes note of the withdrawal and establishes, merely as a declaratory finding, that the appeal proceedings are terminated without a substantive decision and therefore closes the appeal proceedings also procedurally. This latter will normally be communicated to the parties within a few days after the receipt of the withdrawal of the appeal, so that towards the parties this would indicate that the appeal proceedings are now also formally closed. This happened also in the present case, cf. point VIII. above."
• "  However, there is no need to categorically exclude a request for apportionment following any of these two possible end points of the proceedings. "
• "at least since decision R 3/22 by the Enlarged Board of Appeal it has become clear that proceedings before a board of appeal may well come into existence also after the formal closure of the appeal proceedings"
•  In the opinion of this Board, there is no apparent reason why the same findings would not be transferable to the present issue before the Board. It seems undisputed that the issue of the cost apportionment is clearly an issue the arises out of or is in connection with the earlier appeal proceedings. The Board's competence to decide such issues also appears undisputed (see also T 0765/89, Reasons 1). Thus it appears that a request for apportionment submitted after the closure of the appeal proceedings will similarly open such ancillary proceedings, and again, there is no apparent reason why such ancillary proceedings would not be suitable to resolve also the issue on the merits, i.e. to decide whether a cost apportionment is equitable in the circumstances."" 
• "In summary, the Board considers that the request is not inadmissible for the sole reason that it had been filed after the closure of the appeal proceedings."
• On when to file the request: "the Board finds it more equitable to proceed on the assumption that a request that is prima facie submitted within a reasonable period of time in view of the circumstances, should be accepted as admissible, and without any detailed examination whether the party might have submitted the request already before the formal closure of the proceedings, or just one day earlier than it actually did. As set out above, there is simply no apparent reason for urgency and therefore the requesting party should not be burdened with the pressure of meeting a tight and badly defined time limit, which is anyway not known to it and on which it has practically no influence."
• "it seems sufficient to orient the expected reasonable time limit for filing a request for apportionment along the usual time limits applicable to proceedings before the EPO, namely the standard two months of Rule 132(1) EPC."
  
  
• On the merits of the request
• "The Board also accepts that the opponent 3 could have avoided costs if it had been notified about the intentions of the proprietor earlier. However, the mere fact that the costs of the opponent 3 possibly could have been avoided does not immediately establish that the proprietor acted in bad faith in this respect and therefore should be held financially liable through a cost apportionment under Article 104(1) EPC."
• "If, for the sake of argument, the Board were to accept that, in the present case, the proprietor was indeed under an obligation to give notice of withdrawal earlier, a number of questions would immediately arise: how much earlier should the proprietor have withdrawn the appeal in order to be free of financial liability to the other parties? On what factual and legal basis should the Board set such an earlier date? How could the representative of the proprietor have been expected to know that date? Did it have a duty to contact the other parties to enquire about the cancellation periods of their travel arrangements? Was it incumbent on the party and its representatives to arrange their own internal workflow to take these factors into account, e.g. to arrange a timely consultation on the case well in advance of the oral hearing, in order to avoid costs for the other parties (and thereby possibly incurring additional costs for themselves)?"
• "Where, as in the present case, there are many opposing parties, a party intending to withdraw the appeal might even be tempted to take part in the oral proceedings without any real interest in the outcome, merely in order to avoid the accusation that the costs of preparing for the oral proceedings were unnecessary and should be apportioned. For these reasons, the Board sees no culpable conduct on the part of the patent proprietor and no justification for awarding apportionment of costs, either in whole or in part."

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t200617eu1