T 0453/24 - Appeal concerning the fixing of costs

Key points

• This is an appeal against a decision fixing the costs. The OD had conducted the procedure for fixing the costs after the decision to apportion costs had become final. 
• The second oral proceedings [before the OD] took place on 13 September 2018. The patent proprietor requested that the costs arising from the second oral proceedings be borne by the opponent.

• III. In its interlocutory decision of 21 December 2018, the opposition division found the then pending main request to be allowable and decided that "the costs incurred by the proprietor in respect to the second oral proceedings should be borne by the opponent". More specifically, the opposition division concluded at the end of its reasons "that the costs incurred by the proprietor in respect to the second oral proceedings (including travel costs and the time that will be charged by the proprietor's representatives to prepare and attend said oral proceedings) should be borne by the opponent"

• The opponent's appeal was dismissed.

• In the course of the subsequent proceedings before the opposition division on fixing the amount of costs [Rule 88(2)], the patent proprietor (respondent in the present proceedings) requested that the costs be fixed at a total amount of GBP 16,827.67. The request was supported by an invoice for the same amount issued on 28 September 2018 to the respondent. The invoice covered professional charges in the amount of GBP 14,381.50 and travel costs in the amount of GBP 2,446.17, and it was filed earlier with the opposition division on 12 April 2019 and re-filed on 24 March 2023. After having been informed by the EPO's formalities officer that supporting evidence related to said invoice was missing, the respondent filed various documents as evidence for the travel costs of GBP 2,446.17

• In its decision of 26 January 2024 (decision under appeal), the opposition division eventually fixed the amount at GBP 16 162.42,

• The appellant (opponent) requested, as its main request, that the decision under appeal, awarding costs in the amount of GBP 16,162.24 or EUR 18,910.03 to the respondent under Article 104(2) and Rule 88(3) EPC, be set aside and that the following costs not be considered for the final amount:

  a) the costs related to work on the file before the oral proceedings on 4 September 2018 and 5 September 2018;

  b) the costs incurred by Ms Cornish for preparing and participating in the oral proceedings;

  ... in the absence of a more detailed bill of costs.

• The Board: "The appeal is admissible. Under Rule 97(2) EPC, a decision fixing the amount of costs of opposition proceedings under Article 104 EPC cannot be appealed unless the amount exceeds that of the fee for appeal. In the present case, the disputed amount of costs exceeds the appeal fee."

• The Board: " The board in T 34/14 (Reasons, point 5.4) found that an opposition division's decision on apportionment of cost is a discretionary one that should be overruled only if the board". Note, however, that the present appeal is about the fixing of the costs.

• The standard of proof is not very high when it comes to the determination of the amount of apportioned costs under Article 104 EPC (see Rule 88(2), last sentence, EPC: "Costs may be fixed once their credibility is established.".)

• "The appellant takes the position that the presence of Ms Cornish at the second oral proceedings (and the respective expenses calculated at GBP 3,655.00 by the appellant) could have been avoided since she did not actively take part in these oral proceedings."

• " The board concludes that the presence of two professional representatives at relevant oral proceedings was standard practice in the course of the work done for the respondent by its representatives. The board notes that this practice is very common among parties to proceedings before the EPO."

• "The board does not consider the amount of GBP 7,177.50 for Mr Abthorpe's work between 10 and 13 September 2018 to be unreasonable. On the one hand, the appellant's assumption that Mr Abthorpe spent only two working days on this work lacks any basis. On the other hand, a daily rate between GBP 2,400.00 and GBP 3,600.00 (assuming between two and three working days were spent) does not seem to be unreasonable given that the rates vary between [Contracting States] and that the rates generally tend to increase rather than decrease."

• The appeal is dismissed.

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/t240453eu1