T 1462/24 - Allocation of files to Boards (DMF for MS)

Key points

• A case with fourteen opponents and an opponent, about a (blockbuster) medicine (DMF for MS).
• Opponent 2 filed a Notice of appeal three days after the oral proceedings before the OD. O2 wrote that: "The subject-matter of the claims has changed significantly since the International Patent Classification was provided. The patent now claims a specific dose'"   and requested that  " these appeal proceedings be allocated to board of appeal 3.3.04 or 3.3.07" (instead of Board 3.3.08).
• An opposition was also filed against the parent patent, and the appeal in that case was decided by a panel including Ms P as the rapporteur. The Board (3.3.01) in that case dismissed the proprietor's appeal against the revocation of the patent (based on a lack of basis under Art. 123(2)). 
• The Chair of Board 3.3.08 and the Chair of Board 3.3.04 decided to transfer the case to Board 3.3.04. The Chair of Board 3.3.04 is Ms P, who is also the chair of the panel deciding the present case.
• The current Board finds the (very similar) claim to lack basis in the application as filed, for essentially the same recited feature as in the parent case.
• According to the EPO register, there are 9 divisional applications in this patent family. I wish to refrain from commenting on this point here, as it is sensitive after Copaxone (and I care to note that the proprietor did not disapprove of the text of the patent, allowing us and the opponents to benefit from the reasoned decision).
• "Oral proceedings took place before the Board on 25 and 26 November 2025 in the presence of all parties save for opponent 10. In the course of these proceedings, the patent proprietor confirmed that its request for referral of questions to the Enlarged Board of Appeal was no longer conditional and requested that three questions be put to the Enlarged Board of Appeal under Article 112(1)(a) EPC. The Board rejected this request. Subsequently, the patent proprietor submitted two written statements of objections under Rule 106 EPC, one on 25 November 2025 and one on 26 November 2025 (see Annexes of the minutes of the oral proceedings before the Board). The Board rejected these objections. At the request of all opponents present at the oral proceedings, the Board ordered a different apportionment of costs. "
• The proprietor is unhappy about the transfer of the case to Board 3.3.04, and raised an objection under Rule 106 - after the Board had announced the unfavorable conclusion on Art. 123(2) during the hearing.
•  The Board: "the RPBA and the BDS [Business Distribution Scheme] do not provide for parties to appeal proceedings to participate in the procedure set out in Article 1(2) of the BDS and thus do not provide for a right to be heard on the proper allocation of a case file. The latter is an internal case management process involving solely the Chairs of the Boards and, in case no agreement is reached on the allocation, the Presidium. Since the allocation of an appeal case to a Board of Appeal is not a subject for disposition by the parties, any submission by a party to appeal proceedings regarding the reallocation of an appeal pursuant to Article 1(2) of the BDS, including any wish of a party that an appeal be heard by a specific Board (e.g. opponent 02's request submitted in its notice of appeal for the appeal to be allocated to Board 3.3.04 or 3.3.07) is irrelevant and must therefore be disregarded."
• "The patent proprietor also made untenable assertions as to why the technical content of the appeal could not be a valid reason for the transfer (see letter of 14 March 2025, item 21 ii) and item 13), which ultimately amounted to an accusation of unprofessionalism or arbitrariness by the Chairs involved. The patent proprietor's unfounded accusations, which cannot be excused by a representative's lack of legal knowledge, culminated in an accusation of bias"

• "the objection pursuant to Rule 106 EPC came far too late to comply with the spirit and purpose of this provision, which is that a party should draw the Board's attention expressly, and separately from its other submissions, to any fundamental procedural defect to enable it to investigate and, if necessary, rectify the alleged defect while the proceedings are still pending. The Board therefore had no option but to dismiss the objections pursuant to Rule 106 EPC raised in the patent proprietor's letter dated 26 November 2025 also on formal grounds"

•  The Board considers that, despite repeated [questions] the patent proprietor has not provided any legitimate reason for its objections under Rule 106 EPC and their filing after completion of the debate on the merits of the appeal T 1462/24"

• " Since a whole day of discussions had been necessitated by the filing of the patent proprietor's unsubstantiated and even unwarranted objections set out in its letter dated 25 November 2025, which were specified and amended by its letter dated 26 November 2025, the Board considered it equitable to order the patent proprietor to bear the costs for remuneration of one day for at most two professional representatives present at the oral proceedings of 26 November 2025 for each opponent"

• "the patent proprietor remained convinced of its own biased view of events and accused the Chair involved in the reallocation and the Board subsequently constituted of having acted unlawfully. This was unprofessional and even disrespectful. While the patent proprietor's conduct can hardly be seen as compliant with its duty to act in good faith, it does not matter whether this conduct is also to be qualified as an abuse of proceedings since the request for reapportionment of costs could be allowed on the basis of Article 16(1)(c) RPBA"

EPO 

The link to the decision is provided after the jump.

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.

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.

T 0964/21 - Appeal against cost apportionment

Key points

• "The patent proprietor and opponents 2 and 3 (appellants) each filed an appeal against the interlocutory decision of the opposition division, in which the opposition division found that European patent No. 2 879 636 in an amended form [namely Auxiliary Request 12] met the requirements of the EPC. The appellant-proprietor's appeal lies also against the o.pposition division's decision to apportion costs against it."
• AR-12 before the OD is the current main request: "The appellant-proprietor requested as a main request that the decision under appeal be set aside and the patent be maintained on the basis of auxiliary request 12 underlying the impugned decision, or as an auxiliary measure that the appeals of appellant-opponents 2 and 3 be dismissed (i.e. maintenance of the patent in the version found to be allowable by the opposition division). Furthermore, it requested that the opposition division's decision as regards the apportionment of costs be set aside."
• Which is interesting, because then the proprietor no longer contests the decision of the OD on the higher ranking sets of claims. Is the appeal against the cost apportionment still admissible? (Rule 97(1)).
• Rule 97(1): "The apportionment of costs of opposition proceedings cannot be the sole subject of an appeal. "
• "The Board therefore concludes that the subject-matter of claim 1 of the main request extends beyond the content of the application as filed, contrary to the requirement of Article 123(2) EPC."
• "Since the further amendments in claim 1 of the auxiliary request, relating to the provision of an additional transmission layer, do not affect the above finding, as also acknowledged by the appellant proprietor, the patent may not be maintained on the basis of this request, also for non-compliance with the requirement of Article 123(2) EPC."
• "The appellant-proprietor requested that the opposition division's decision as to the apportionment of costs be set aside.

  The formulation of that decision is set out in the reasons of the impugned decision (cf. page 35) as follows:

  ".. the Opposition Division apportions to the Proprietor the costs of the remuneration of the representatives of the parties in respect to oral proceedings and for the undue delaying of the procedure in respect of late filing." 

• " the Board wishes to emphasise that an order on the apportionment of costs under Article 104 EPC must clearly state (at least) the kind of costs to be borne by the burdened party. The order referred to above does not in any way comply with this requirement. In this context, it should be noted that the order is so vague that it is not possible to clearly determine in particular,

  (a) whether the costs for the representatives in preparing for the oral proceedings are included, and

  (b) whether the costs for the representatives for both oral proceedings are included."

• "It should also be noted that the addition in the above-mentioned formulation "and for the undue delaying of the procedure in respect of late filing" does not provide a definition of any kind of associated costs and can only be seen as a hint to the reasoning for the decision, which seemingly was based on the principle of procedural economy. 

• " Furthermore, the opposition division's decision also fails in terms of substance. Irrespective of the question of whether a decision under Article 104 EPC constitutes a discretionary decision, it should first be noted in view of the submissions of appellant-opponent 2 that discretionary decisions can also be reviewed by the Boards in terms of their merits. ... A substantive review of a discretionary decision is therefore not excluded according to established case law. [i.e. G7/93]"

• "the fact that the patent proprietor did not contest the validity of one of the priorities of D22 [a prior right under Article 54(3) EPC] until the first oral proceedings before the opposition division cannot justify a different apportionment of costs in the present case."

• " it is noted that the Board also considers the appellant-proprietor's argument that the late filing of amended requests was also due to the late filing of the objections based on D22 to be convincing. "

• "there are no reasons that would justify a different apportionment of costs. Thus, the Board finds it appropriate that each party shall bear its own costs. Consequently, the decision of the opposition division as to the apportionment of costs is set aside."

• 
  

EPO 

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

T 2175/15 - (II) Further developments

Key points

• This is the case where the opponent made five partiality objections. My earlier post concerned the dismissal of the 2nd, 3rd, 4th and 5th objection. The appeals on the merits have meanwhile been withdrawn. The present decision deals with the request for cost apportionment and was issued on 06.09.2024 and was taken by Board members B, H and K.  The minutes are here.
• Decision on the first objection: issued in writing on 16.09.2024. The board members are anonymised in the decision (?!).  The minutes are here, and mention the Board members N, H and D.
• The decision on the second objection is available here from the publication of decisions, mentions in the PDF Board members M, N and K. The decision is not visible in the online file. It is unclear to me if oral proceedings took place. There are no minutes visible in the online file.  


• The decision on the third objection was taken by Board members N, D, and H issued on 22.09.2023; the decision on the fourth objection by K, D and H issued on 21.09.2023, and the decision on the fifth objection by G, D and H, all on the same day. It must have been a remarkable set of oral proceedings on 23 June 2023. However, the minutes are not visible in the online file.
• The application number is 07150011.0
• A petition for review was filed and is pending under R16/22 (visible on the main tab of the register). However, no documents about the petition for review are visible in the file. It is in the list of pending petitions here: https://www.epo.org/en/case-law-appeals/organisation/eba/pending-petitions-review 
• There are now 6 decisions of Boards of appeal of in this case. Four of them are published under  https://www.epo.org/de/boards-of-appeal/decisions/t152175du1 

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1741/20 - Filing 106 ARs with the appeal

Key points

• The OD had revoked the patent.
• " It was undisputed that among the requests filed by the appellant [proprietor] with the statement of grounds of appeal, only auxiliary requests 2A, 3A and 10D had been requests before the opposition division."
• "The appellant thus filed in appeal 106 requests which had not been pending before the opposition division."

• "The board does not agree with the respondent's argument that the sheer number of fresh requests rendered all the appellant's requests or those not filed before the opposition division inadmissible. A large number of requests is not a sufficient reason to deny admission into the proceedings."

• "It is, however, incumbent on the appellant to guide the board and the respondents through its requests, all the more if the number of requests is large. This includes identifying in every detail the amendments made, explaining the link between the amendments and the outstanding objections against the patent, and providing reasons for filing some of its requests only in appeal (Article 12(4) RPBA 2020). The appellant has failed to fulfil these requirements."

• Follows a consideration of auxiliary request 1A regarding a lack of consistency.

• "The reasoning for auxiliary request 1A applies equally to all fresh requests in appeal. The appellant has not provided a comprehensive and complete summary of the amendments made, has not explained the relevance of all the amendments for the outstanding issues and has not provided reasons why the amendments could not have been carried out earlier."

• All the auxiliary requests which had not been pending before the opposition division are thus not admitted into the proceedings.

• "The appellant argued at the oral proceedings before the board that it was caught by surprise by the opposition division's decision as its preliminary opinion had been positive. The board is not convinced by this argument. An opposition division may change its view at oral proceedings and accept another party's arguments. This is, in fact, the whole purpose of the hearing. Such an outcome cannot thus be surprising."

• "Claim 1 of auxiliary request 2A [which was admitted] thus extends the scope of protection conferred by the patent as granted (Article 123(3) EPC)."

• " The board concludes that all the appellant's requests are either not admissible or not allowable. The appeal is thus dismissed."" 

• The patent remains revoked.

• Respondent IV requested a different apportionment of costs in view of the large number of requests and the appellant putting forward a fresh case in appeal. As a rule, each party should bear its own costs. The board sees no reason to depart from this principle in the current case. Neither the large number of the requests nor a different interpretation of the claimed subject-matter is in itself an abuse of procedure. The request for a different apportionment of costs is thus refused.

• EPO 

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

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.

T 1484/19 - Request after decision

Key points

•  "With its letter dated 24 November 2022, the patent proprietor (respondent) stated that it no longer approved the text in which the patent had been granted and would not submit an amended text. It also withdrew all auxiliary requests filed during appeal proceedings."
• "In the morning of 29 November 2022, the board issued its decision revoking the patent in the absence of a text agreed by the respondent (Article 113(2) EPC). The decision was authenticated at 09.20 hrs CET by the Chairwoman and at 09.57 hrs by the Registrar and sent to the postal service for dispatch at 10.01 hrs."
• "By letter dated 29 November 2022, filed electronically and received at the EPO at 14.55 hrs CET, appellant 2 requested a partial reimbursement of the appeal fee under Rule 103(3)(a) EPC and apportionment of costs."
• "the board therefore considered the issue of whether, in light of decision G 12/91 (OJ EPO 1994, 285), appellant 2's request for apportionment of costs, which was filed on the day of completion of the internal decision-making process for the decision of 29 November 2022, was submitted in time for it to be considered by the board. The board concluded that the completion of the decision-making process within the meaning of decision G 12/91 had to be determined with reference to a date and not an hour or an exact time on a date. Consequently, appellant 2's request was filed after the decision-making process had been completed."
• "the board also questioned whether decision G 12/91 was concerned with a decision as to substance but not with a situation as in the current case in which appeal proceedings are terminated without a decision. Indeed, under the established case law, a withdrawal of appeal terminates the proceedings on the merits at once (without decision as to substance), but the board still has the power to decide on ancillary questions such as the reimbursement of the appeal fee"
• "it could be argued that the decision of 29 November 2022 brought the appeal proceedings to a close for the substantive merits of the appeals ... while leaving ancillary questions like costs open to a decision. Consequently, the board would have the power to decide on the request for reimbursement of the appeal fee and for apportionment of costs filed after the completion of the internal decision-making process."
• " It can be left open whether and, if so, to what extent legal certainty imposes limitations as to the admissibility of a request for apportionment of costs filed after termination of the appeal proceedings (in line with the approach taken in T 1556/14 of 15 October 2020) as the current request is not allowable for the following reasons." 
• The Board issues a preliminary opinion on 09.11.2022, in advance of the oral proceedings scheduled for 01.12.2022 (!) (summons 18.01.2022). The proprietor then disapproved the text of the patent on 29.11.2023. The Board sees no abuse of procedure in this action of the proprietor. 
• As a comment Rule 115 EPC only specifics a minimum period of 2 months notice for the summons, Art. 15(1) RPBA specifies a period of four months for the summons, and Art. 15(1) sixth sentence RPBA only specifies that the Board " shall endeavour to issue the [preliminary opinion] at least four months in advance of the date of the oral proceedings". Apparently, sometimes the preliminary opinion is issued less than one month in advance.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0635/21 - The divisional game at the EPO

Key points

• The patentee withdrawals its appeal during the oral proceedings before the Board.
• ". The Board is mindful of the fact that in certain circumstances, the withdrawal of an appeal can be considered abusive, namely in the context of several (pending) divisional applications where the withdrawal of an application or appeal is meant to avoid legal certainty, see e.g. the decision of the District Court Munich of 24 February 2020 (7 O 1456/20), headnote 1: "A patentee that on the basis of a parent application has branched off several, mostly identical divisional applications, acts contrary to honest practices when by voluntarily dropping the patent right prior to a decision of the opposition division, avoids a decision of the Boards of Appeal for a parallel divisional patent that could clarify the legal situation for the whole field of the invention". Further such practices are highlighted by K. Foss-Solbrekk, "The Divisional Game: Using Procedural Rights to Impede Generic/Biosimilar Market Entry", 53 IIC 1007-1037 (2022)."
• As a comment, "considered abusive" may also be interpreted in connection with national law and EU competition law.
• "for the case at issue, the board remarks that it is established case law that an appellant has the right, based on the principle of party's disposition, to withdraw its appeal at any time and that the use of a right does not in principle constitute an abuse (see for example decision T 0674/03). Moreover, there is in the Board's view insufficient evidence that the withdrawal of the appeal was part of a systematic approach by the appellant to avoid clarifying the issues of patentability by way of a written decision on such issues. The board thus concludes for the above reasons that the respondent's request for apportionment of costs is not justified and that any party has to bear the costs it has incurred."
• The case was about bendable glass.
• As a comment, during the oral proceedings, the Board announced a conclusion that AR 68 (!) did not meet the requirements of Article 83 and that this issue appeared to apply to all other requests on file. Had the Board announced this finding directly as a decision, the Board would be obliged to issue the written decision. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 0939/21 - Not showing up is costly

Key points

•  "Late in the afternoon preceding the oral proceedings [before the board], the appellant announced that it would not be attending the next day's oral proceedings."
• "The respondent, the board and the interpreters learned of this only on the morning of the oral proceedings. The appellant has provided no reasons why it could not declare its non-attendance earlier. The board cannot see any reason either. In fact, more than six months before the oral proceedings, the board had informed the parties of its preliminary opinion that the appeal was likely to be dismissed. About two months before the oral proceedings, the appellant had still indicated that it intended to attend them, and even requested interpreting services."

• "Generally, the boards consider it highly undesirable for summoned parties to announce too late that they will not be attending oral proceedings, in particular when no reasons for this step are given. Such conduct is inconsistent both with the responsible exercise of rights and with the basic rules of courtesy"

• "In the case at hand, the oral proceedings took place but contributed nothing new to the merits of the case." (the appeal was dismissed)

• "Had the appellant informed the respondent and the board earlier, the oral proceedings could have been avoided: even if, contrary to all expectations, the respondent had not withdrawn its request for oral proceedings in view of the board's preliminary opinion, the board could have applied the rationale of T 1467/11 (headnote and point 1 of the reasons) by deciding that the appeal be dismissed without deciding on its admissibility."

• "For reasons of equity, the board thus decides that the appellant bears the respondent's costs for the appearance at and the preparation of the oral proceedings of 28 April 2023 (Article 104(1) EPC, Article 16 RPBA 2020)."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

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.

T 2197/16 - No appellate review of cost apportionment

Key points

•  "The opponent's appeal is against the opposition division's decision rejecting the opposition to European patent No. 2 296 858 ("the patent") and ordering the patent proprietor to pay 100% of the costs of the oral proceedings scheduled for 23 February 2016 to the opponent under Article 104(1) EPC. With its notice of appeal dated 14 September 2016, the appellant (opponent) appealed against the decision of the opposition division, except in so far as it relates to costs."
• "In its reply dated 3 April 2017, the respondent (patent proprietor) requested, inter alia, that the decision on costs be included in the subject of the appeal and that the discussion on this matter be reopened."
• The Board considers the OD's decision on the costs to be outside the scope of the appeal.
• 
  
• "The meaning of the generally-recognised procedural principle of free party disposition is that the appeal cannot extend to issues that, in view of the notice of appeal, the appellant themselves did not wish to be a subject of the appeal, nor can the extent of the rights be decided beyond the extent requested (see also decision T 689/09, point 1.7 of the Reasons)."
• "In the case in hand, the notice of appeal clearly shows that the appellant did not appeal against the opposition division's decision on the apportionment of costs. Nor does the statement of grounds of appeal refer to the issue of the apportionment of costs. Therefore the opposition division's decision in this respect is not the subject of the present appeal."
• "In view of the above, the issue of the apportionment of costs is a legal issue which may not be dealt with and decided on in the appeal proceedings, since it is not the subject of the present appeal. For that reason alone, the respondent's requests regarding the decision on the apportionment of costs are not admissible.'
• "the general considerations of [decisions T 753/92 and T 762/96 ] are applicable here mutatis mutandis since, if the respondent had lodged an appeal against the opposition division's decision on apportionment of costs, the appeal, with the apportionment of costs as its sole subject, would have been inadmissible under Article 106(3) and Rule 97(1) EPC. The respondent is only a party to the proceedings under Article 107, second sentence, EPC, and does not have the right to file a "cross-appeal" without limit of time and, unlike the rights the respondent would have as appellant, its requests are therefore subject to restrictions (see also decision G 9/92, OJ EPO 1994, 875, point 16 of the Reasons)."
• As a comment, the provision of Rule 97(1) "The apportionment of costs of opposition proceedings cannot be the sole subject of an appeal" is simply a choice of the legislator to limit the right to appeal and must be respected.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 3261/19 - Reversal apportionment of costs

Key points

•  The opponent appeals against the rejection of the opposition. The OD had also ordered the opponent to pay costs, i.e. a cost apportionment, for the costs made by the patentee for attending the oral proceedings before the OD (decision of the OD here).
• Rule 97 is no issue in the case at hand.
• The Board overturns the cost apportionment. The OD had based the decision on the fact that the opponent had announced very late that it would not attend the oral proceedings.
• The Board in translation: "However, an apportionment of costs does not constitute a sanction for impolite behavior by a party, but can be ordered if the behavior of one party incurs avoidable costs for the other party (case law of the Boards of Appeal, III.R.2.). As far as the unannounced non-participation in oral proceedings is concerned, it follows from settled case-law that this can lead to an apportionment of costs in favor of the participating party if the oral proceedings were clearly superfluous due to the non-participation of the other party (Case Law of the Boards of Appeal, III. R.2.2.1)."
• The patentee argues that in the case at hand, the oral proceedings were superfluous in the absence of the opponent. The preliminary opinion of the OD was indeed entirely in favor of the patentee. However, the opponent had filed a new document D6 after the preliminary opinion. 
• The Board: "However, the Board is of the opinion that, in view of the opponents' submission of 18 July 2019, in which, among other things, D6 and a corresponding objection under Article 56 EPC were mentioned for the first time, the holding of the oral proceedings could not be considered superfluous, because a preliminary opinion of the opposition division on the supplementary and partly new submissions of the opponents was not available before the oral proceedings. Therefore, prior to the hearing, the patent proprietor could not trust that the opposition division would decide in its favor according to the preliminary opinion of January 4, 2019. For this reason, it was objectively to be assumed that the patent proprietor would have appeared at the hearing even if the opponents were absent. Accordingly, the omission of a timely notification of the non-appearance does not seem to be causal for the presence of the patent proprietor or her representative in the oral hearing, including the associated costs. Under these circumstances, it also does not seem frivolous that the opponent did not announce its non-appearance in good time."
• The case seems to imply that an opponent that announces very late that it will not attend oral proceedings, should additionally cite a new citation as prior art, but I'm not sure if that is a correct result.
• It may be important that the Board in fact finds D6 to be sufficiently relevant and decides to overturn the decision of the OD to hold D6 inadmissible.
• It seems that the OD had overlooked a paragraph in D6. It may be asked if the absence of the opponent during the oral proceedings could have contributed to the OD overlooking a part of D6. 

EPO T 3261/19 -

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1310/18 - Apportionment of costs

Key points

• The Board: "The appellant shall bear the costs incurred by the respondent for the preparation of the oral proceedings, namely fourteen hours' preparation time for the authorised representative."
• "On 9 December 2021, the day before the scheduled date, in an electronic letter that was received at 16:34, the appellant informed the board that it would not be participating in the oral proceedings and requested that a decision be taken on the basis of the state of the file. No reason was given for this change of mind. " "Furthermore, the appellant did not inform the respondent."
• "As noted by the respondent, the board's preliminary opinion on the case was wholly positive in favour of the respondent. None of the appellant's objections was considered convincing, and the opinion was expressed that the appeal would be dismissed. "
• "in the absence of any indication from the appellant that it was not continuing to argue the case, it was necessary for the proprietor's representative, as well as for the board, to spend time properly preparing for the oral proceedings immediately before they took place. It is noted that the respondent had raised numerous lines of attack in its grounds of appeal, referring to multiple documents. Therefore a considerable effort was required to prepare for the case properly. "
• " It is therefore clear that the appellant's conduct resulted in an inefficient use of the time of both the respondent and the board. "
• "In these circumstances an apportionment of costs in favour of the respondent is appropriate under Article 104(1) EPC and Article 16(1)(c) RPBA."

EPO T 1310/18 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1233/17 - No costs order

 Key points

•  “the respondent requested the board to award its costs to the appellant [i.e. to order the appellant to pay the costs of the respondent]. It gave the reasons that follow: ... The appellant announced that it would not take part in the oral proceedings only after the EPO organised the required interpretation, and the respondent's representative had conducted a test call in order to prepare the videoconference. By failing to respond to the board's preliminary view and informing of its non-attendance to the oral proceedings at such a late stage, the appellant forced the respondent to perform a considerable amount of unnecessary preparatory work.”
   
• The Board does not award the costs: “Following the principle of party's disposition, it is a party's right to request oral proceedings, and to maintain its request for as long as it suits its case. A party is also free to waive that right at any point of the proceedings.
• “Interpretation is paid by the users' fees, and should be demanded responsibly. The EPC foresees however no consequence if these resources are claimed, but remain unused. The respondent incurred in any case no direct costs in this respect.
• “Lastly, the respondent has not carried out any work or made expenses which went beyond what would have been required if oral proceedings had taken place. This is the key point under Articles 104(1) EPC and 16 RPBA 2020.
• As a comment, an important relevant fact may have been that the oral proceedings scheduled for 05.10.2021 were cancelled on 27.09.2021, so probably the respondent had not yet begun their intensive substantive preparatory work for the oral proceedings

T 1233/17

https://www.epo.org/law-practice/case-law-appeals/recent/t171233eu1.html

decision text omited.

T 3077/19 - Accidental anticipation and disclaimer

 Key points

• In this opposition appeal, claim 1 as granted includes a disclaimer. The Board first decides that it is an undisclosed disclaimer.
• “Document E4 is prior art under Article 54(2) EPC. E4 deals with a blanket for protecting a car, including features to prevent the theft of the blanket. It is not disputed that E4 anticipates on page 2, lines 9-23, and Figures 1-2, the subject-matter of claim 1 if its disclaimer is disregarded. However, the technical field of E4 (car blankets) is so remote and the disclosure of E4 so unrelated from the claimed blanket for therapeutic treatment that the person skilled in the art would never have taken it into consideration when making the invention. Hence, E4 represents an accidental anticipation. An undisclosed disclaimer to restore novelty over E4 may thus be allowable.”
• However, “the undisclosed disclaimer removes more than necessary to restore novelty over E4. The undisclosed disclaimer is thus unallowable. Claim 1 contains subject-matter which extends beyond the content of the application as filed.
• Also some remarks about apportionment of costs under Art. 104 and the late submission of Art.100(c) EPC as ground during the first instance proceedings (the cost apportionment is not awarded; the OD had admitted the ground).

T 3077/19 

https://www.epo.org/law-practice/case-law-appeals/recent/t193077eu1.html

Reasons for the Decision

1. The invention

The invention relates to a weight blanket for the therapeutic treatment of a person. The blanket comprises means for increasing the blanket's weight including at least one linked object, such as a chain, which is completely enclosed inside the blanket. By applying pressure to the body, such blankets provide a feeling of safety and helps relieve complaints such as unrest and sleep problems (paragraphs [0002]-[0003] of the description).

2. New ground for opposition under Article 100(c) EPC

The ground for opposition under Article 100(c) EPC was introduced into the opposition proceedings by a discretionary decision of the Opposition Division.

A board of appeal should only overrule how a department of first instance exercised its discretion if it concludes that the department of first instance did so according to the wrong principles, without taking into account the right principles or in an unreasonable way, and thus exceeded the proper limits of its discretion (Case Law of the Boards of Appeal of the European Patent Office, 9th edition 2019, IV.C.4.5.2 and V.A.3.5.5).

As indicated in point 11.2.1 of the impugned decision, the Opposition Division considered the ground of opposition under Article 100(c) EPC to be prima facie relevant and thus made use of its discretion. The Opposition Division even went on to revoke the patent based on this ground.

Furthermore, there is no indication that the Opposition Division exercised its discretion according to the wrong principles, without taking into account the right principles or in an unreasonable way. Hence, there is no reason to overrule the discretionary decision of the Opposition Division and disregard this ground for opposition.

T 1556/14 - Decision on cost apportionment

 Key points

• In this post a decision of a Board of Appeal, but not on the appeal. The OD had decided to maintain the patent in amended form, both Patentee and Opponent 1 appealed. With letter 09.08.2019, patentee withdrew its appeal, disapproved the text and requested revocation of the patent. The Board held oral proceedings on 12.08.2020 in the absence of the opponents (but in the presence of patentee) revoking the patent. 
• “By letter dated 15 August 2019, appellant II (Opponent 1) requested that costs be awarded against appellant I (Patentee) for the time spent preparing for the oral proceedings and for non-refundable travel costs (apportionment of costs).”
• As held in T765/89, the Board has “inherent original jurisdiction to consider requests made to it in matters arising out of or in connection with the former appeal procedure”
• The Board: “Where [a request for cost apportionment] cannot be submitted before termination of the proceedings, for example when the only appeal is withdrawn and the timing of that withdrawal or other related circumstances are the alleged grounds for requesting apportionment of costs, the request must be accepted as being admissible despite being submitted after termination of the proceedings. Decision T 765/89, to which [opponent 1] referred, seems to concern such a situation.”
• The Board: “in the case in hand the board is not convinced that appellant II was unable to file a request for apportionment of costs prior to the termination of the proceedings on 12 August 2019. Appellant II's representative was made aware of appellant I's letter of 9 August 2019 at 20:30 that day. It decided not to attend the oral proceedings and could therefore also have decided to file a request for apportionment of costs over the weekend, even if it had not been possible to consult appellant II. ”
• The present Board: “Under Rule 88(1) EPC, apportionment of costs is to be dealt with in the decision on the opposition. The rule implies that the request for apportionment is submitted before that decision is taken”. 
• The request for cost apportionment is rejected as inadmissible.
• Opponent 1 received Patentee's letter on Friday 9 August at 20:30 (the EPO at 21:13 CEST through online filing, link). The oral proceedings were held on Monday 12 August closing at 09:10 according to the minutes of the oral proceedings. I'm not sure what the Board means with filing a request 'over the weekend' and if any request filed on Monday 08:30 using e.g. fax would have effectively reached the Board before Monday 09:10. 
• I note that the minutes of the oral proceedings do not appear to acknowledge the withdrawal of Patentee's appeal by letter of Friday 20:30, e.g. Patentee is simply referred to as Appellant I in the minutes.
  
• T 765/89: “In the exercise of its inherent original jurisdiction to consider requests made to it in matters arising out of or in connection with the former appeal procedure, the Board still has to decide on the Respondents' requests to impose on the Appellants the costs for the preparations made in view of oral proceedings”. 
• 
  
• Of note: “In the case in hand the board ordered oral proceedings to be held on 12-14 August [sic!] 2019”. 

EPO  T 1556/14.

https://www.epo.org/law-practice/case-law-appeals/recent/t141556eu2.html

(decision text omitted)

T 0989/15 - The rejoinder in appeal

Key points

• As to the present case: “the appellant [patentee] affirmed at the oral proceedings that the preliminary opinion of the board did not include any issues not already raised by the respondents in their replies of 15 December 2015 and 21 January 2016 to the statement setting out the grounds of appeal. The relevant objections of added subject-matter, lack of clarity and lack of novelty were therefore known to the appellant at the latest at the beginning of 2016, i.e. just short of four years before the preliminary opinion of the board was issued. As a consequence, there can be no doubt that the appellant could have replied to the objections earlier, in particular in direct reply to the respondents' letters of reply mentioned above.”
• “In fact, through the statement in its letter dated 3 December 2015 requesting "to provide the proprietor with an opportunity to reply to [a reply of the opponent directed to the proprietor's arguments and claim sets]", the appellant had expressed its intention to react to objections at an early stage of the appeal proceedings.
• In contrast, the appellant opted to wait until it had received the board's preliminary opinion given in the communication of 3 January 2020. Only after that the appellant filed a rejoinder.”
• The procedural step of the rejoinder of the appellant is implicitly specified in Art.15(1) paragraph 1, second sentence RPBA; see also Explanatory Note 13(2): “The intention behind the two-month minimum waiting time [between the respondent's response and the summons] is to give a party the opportunity to react to another party’s written reply with submissions falling under the less strict second level of the convergent approach, i.e. Art. 13(1).”
• “The board concurs with respondent II [opponent] that a party to appeal proceedings must always be prepared for the board to reverse a conclusion reached by the department of first instance in the proceedings leading to the impugned decision. The fact that the opposition division in point 5.1.4 of its decision gave a positive opinion, that the amendment of feature I met the requirements of Article 123(2) EPC, was in itself not a sufficient reason for the appellant to not file an appropriate fall-back position with its initial appeal submissions.”
• The OD had revoked the patent, finding that claim 1 of AR-2 was not novel. The Board's remark raises the interesting issue whether patentee should really address Art.123(2) - that was decided in its favour by the OD - in its Statement of grounds (thereby going against the idea of convergence at the first level) or in the rejoinder.
• I suggest using the term 'initial appeal submissions' as umbrella term for the Statement of grounds and the response of the respondent under reply under Art. 12(1)(c) RPBA

• This decision of Board 3.2.05 has verbatim the same headnote as recent decision T 0954/17 of Board 3.4.02, with different parties. 
• Which raises an interesting issue about the independence of the Board, incidentally.
• Erratum 26.07.2020 Which perfectly makes sense because the legal member was the same in both cases.  The idea of multiple Technical Boards of Appeal sharing a legal member is indeed improving the consistency of the case law.   
• For an analysis of the headnote, I refer to T 0954/17.

EPO - T 0989/15 link

Reasons for the Decision

Procedural status of parties

1. Under Article 107, second sentence, EPC, the parties to proceedings before the department of first instance are also parties to the ensuing appeal proceedings, even if they have not filed an appeal. Therefore, where more than one party to opposition proceedings lodges an appeal and one of them subsequently withdraws its appeal, it becomes a party as of right under Article 107 EPC, provided the other appeal(s) is(are) admissible.

2. Accordingly, after withdrawing its appeal during the oral proceedings before the board, opponent 2 became a party as of right under Article 107 EPC to the present appeal proceedings, i.e. respondent II.

Admittance of the appellant's main request and first to fourth auxiliary requests

3. The main request and the first to fourth auxiliary requests were filed with the letter dated 17 January 2020 as the fourth to eighth auxiliary requests. Thus, these requests were filed after the parties had been summoned to oral proceedings.

In the present case, the summons to oral proceedings was notified before the date on which the RPBA 2020 entered into force, i.e. 1 January 2020. Thus, in accordance with Article 25(3) RPBA 2020, Article 13(2) RPBA 2020 does not apply to the question whether to admit the appellant's requests filed on 17 January 2020 into the appeal proceedings. Instead, Article 13 of the Rules of Procedure of the Boards of Appeal in the version of 2007 (RPBA 2007, see OJ EPO 2007, 536 and EPC, 16th edition, June 2016, pages 601 to 629) continues to apply.

4. Pursuant to Article 13(1) RPBA 2007, any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the board's discretion. This discretion is to be exercised in view of, inter alia, the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy. Article 13(3) RPBA 2007 adds that amendments sought to be made after the oral proceedings have been arranged will not be admitted "if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings".

5. Article 13(1) RPBA 2007 merely lists examples of factors to be considered by the board when exercising its discretion and not an exhaustive set of criteria which must be cumulatively met, such that other considerations and well-established criteria relevant to the admissibility issue can also be taken into account (see Case Law of the Boards of Appeal of the European Patent Office ("Case Law"), 9th edition 2019, V.A.4.1.2). Nor do these criteria have to be met cumulatively. According to the case law of the boards of appeal developed in the context of Article 13(1) and (3) RPBA 2007, for amendments within the meaning of Article 13 RPBA 2007, such as facts and evidence submitted late, further criteria may also be applied, for example the relevance of the late-filed submission, the reasons for the late filing, whether the late filing has to be regarded as an abuse of procedure, and whether it is a legitimate reaction to the decision at first instance (see e.g. Case Law, 9th edition 2019, V.A.4.13). According to established case law, discretion has to be exercised equitably, i.e. all relevant factors which arise in the particular circumstances of the case have to be considered, and, in exercising this discretion, the circumstances of the specific case have to be taken into account (see Case Law, 9th edition 2019, V.A.4.3).

Essentially, it is a matter for each party to submit all facts, evidence, arguments and requests relevant for the enforcement or defence of its rights as early and completely as possible, in particular in inter partes proceedings, in order to act fairly towards the other party and, more generally, to ensure due and swift conduct of the proceedings (see Case Law, 9th edition 2019, V.A.4.1.2 and V.A.4.2.1). According to the established case law of the boards of appeal, amending a party's case at a late stage in the proceedings can be justifiable if it is an appropriate and immediate reaction to unforeseeable developments in the previous proceedings which do not lie in the responsibility of the party submitting the amendment (see Case Law, 9th edition 2019, V.A.4.4.2).

6. The present requests were submitted by the appellant "to address all objections put forward by the BoA and those of the opponents" (page 1 of the letter dated 17 January 2020).

Yet, the appellant affirmed at the oral proceedings that the preliminary opinion of the board did not include any issues not already raised by the respondents in their replies of 15 December 2015 and 21 January 2016 to the statement setting out the grounds of appeal. The relevant objections of added subject-matter, lack of clarity and lack of novelty were therefore known to the appellant at the latest at the beginning of 2016, i.e. just short of four years before the preliminary opinion of the board was issued. As a consequence, there can be no doubt that the appellant could have replied to the objections earlier, in particular in direct reply to the respondents' letters of reply mentioned above.

In fact, through the statement in its letter dated 3 December 2015 requesting "to provide the proprietor with an opportunity to reply to [a reply of the opponent directed to the proprietor's arguments and claim sets]", the appellant had expressed its intention to react to objections at an early stage of the appeal proceedings.

In contrast, the appellant opted to wait until it had received the board's preliminary opinion given in the communication of 3 January 2020. Only after that the appellant filed a rejoinder.

7. In this context the board wishes to remark that a communication under Article 15(1) RPBA 2020 is intended to set out the preliminary opinion of the board as guidance for the oral proceedings. Where the board's communication contains a preliminary opinion based solely on the issues raised by the parties and their arguments, that communication cannot be taken as a justifiable trigger for submitting new requests that the parties could have filed earlier (see also Case Law, 9th edition 2019, V.A.4.7).

8. The board concurs with respondent II that a party to appeal proceedings must always be prepared for the board to reverse a conclusion reached by the department of first instance in the proceedings leading to the impugned decision. The fact that the opposition division in point 5.1.4 of its decision gave a positive opinion, that the amendment of feature I met the requirements of Article 123(2) EPC, was in itself not a sufficient reason for the appellant to not file an appropriate fall-back position with its initial appeal submissions.

9. Also, the argument that the appellant could not have been expected to file an auxiliary request in reaction to each and every objection raised by the other parties does not persuade the board. In the present case, respondents I and II each brought forward one objection of added subject-matter to claim 1 of the then main request in their letters of reply dated 15 December 2015 and 21 January 2016. Given the circumstances of the case, it would not have posed an undue burden on the appellant as the losing party to file an auxiliary request addressing at least these two issues in an attempt to provide a fall-back position in case the board were to concur with the respondents.

10. By filing the claim requests at such a late stage of the appeal proceedings, the requirements of due process and the need for procedural economy were therefore not satisfied.

11. With the main request and each of the first to third auxiliary requests, the appellant filed an amended dependent claim 2 with the added feature:

"walls (26, 27) of the meandering channel (24) that are positioned next to each other have a distance (d) equal to two times an amplitude (a) of the sine wave".

The appellant argued that this amendment was a reaction to the view of the board expressed in point 11.3 of its preliminary opinion, in particular that "the amplitude configuration in pending claim 2 of the main request ... depends on the anti-symmetric feature, according to the claiming sequence in granted claims 4 and 5" (letter dated 17 January 2020, point 1.2.3.1). The amendment was alleged to have a basis on page 24, lines 28 to 31, of the description as originally filed.

12. Instead of addressing the objection of added subject-matter in respect of claim 2, which was raised by respondent I and referred to by the board in its preliminary opinion, the appellant chose to incorporate entirely new subject-matter taken from the description into the claim.

Admitting these requests would have meant having to analyse dependent claim 2 anew with respect to the requirements of the EPC, in particular Articles 84 and 123(2) EPC. Such an analysis would have been complex, requiring a substantial amount of time at this late stage of the appeal proceedings, contrary to the need for procedural economy.

The board is of the view that, at such a late stage, it is not reasonable for the other parties to be expected to deal with subject-matter never before presented in the proceedings, although it could easily have been done so at an earlier stage of the appeal proceedings, and that does not appear to be a clear reaction to the objections on file.

13. In this respect, the fourth auxiliary request differs from the higher-ranking requests because claim 2 under dispute is now deleted.

The fourth auxiliary request also seems to address the objection raised by respondent II in respect of feature I and summarised in point 11.2 of the preliminary opinion of the board, in that further features of the detailed description of Figure 3b were added to claim 1. The board further observes that the "initial thoughts" of respondent II "on whether the claims of the new requests would be 'clearly allowable'" (see the letter dated 5 February 2020) did not take issue with the fourth auxiliary request. This may be regarded as tantamount to a prima facie finding that the amendments successfully address the issues raised without giving rise to new ones.

Admittedly, in its letter dated 5 March 2020 (pages 13 and 14), respondent II saw a lack of clarity in view of the word "size" in feature J and alleged a lack of inventive step having regard to document E1. However, these issues correspond to a full assessment of the compliance of the request with the requirements of the EPC, rather than a prima facie consideration with the aim of deciding on its admittance. This is underpinned by the statement in the second paragraph on page 3 of that letter, in which respondent II expressed "that we hope to discuss at the oral proceedings if the first appellant's late-filed auxiliary requests are admitted into proceedings".

14. In view of the above, the board, in exercising its discretion in accordance with Article 13(1) and (3) RPBA 2007, decided not to admit the main request and the first to third auxiliary requests into the appeal proceedings for the reasons that they were filed at a very late stage and introduced new and complex issues in respect of features taken from the description.

15. The fourth auxiliary request, on the other hand, was admitted into the appeal proceedings by the board, exercising its discretion in accordance with Article 13(1) and (3) RPBA.

16. Furthermore, in some recent decisions where, as in the case now before the board, Article 13 RPBA 2007, and not Article 13(2) RPBA 2020, was held to apply, it was also considered that Article 13(1) RPBA 2020 applied in addition, because this is not excluded by Article 25 RPBA 2020 (see e.g. decisions T 634/16 of 10 January 2020, points 7 to 14 of the Reasons, and T 32/16 of 14 January 2020, points 1.1.1 to 1.1.3 of the Reasons).

In the present case, however, the board does not consider it necessary to apply the criteria set out in Article 13(1) RPBA 2020 in addition to those which it may take into account when exercising its discretion under Article 13 RPBA 2007 (see points 4 and 5 above).

16.1 In cases where the summons to oral proceedings has been notified on or after 1 January 2020, Article 13(2) RPBA 2020 implements the third level of the convergent approach applicable in appeal proceedings (see document CA/3/19, section VI, Explanatory remarks on Article 13(2), first paragraph, first sentence; see also Supplementary publication 2 to OJ EPO 2020). Article 13(2) RPBA 2020 imposes the most stringent limitations on appeal submissions which are made at an advanced stage of the proceedings, namely after expiry of a period set by the board of appeal in a communication under Rule 100(2) EPC or, where no such communication is issued, after notification of a summons to oral proceedings (see document CA/3/19, section VI, Explanatory remarks on Article 13(2), first paragraph, second sentence). Where an amendment is made to a party's appeal case at this advanced stage of the proceedings, Article 13(2) RPBA 2020 provides that it will, in principle, no longer be taken into account unless the party concerned has shown compelling reasons why the circumstances are exceptional. If such circumstances are shown to exist, the board of appeal may, in exercising its discretion, decide to admit an amendment made to the appeal case at this advanced stage of the proceedings (see document CA/3/19, section VI, Explanatory remarks on Article 13(2), third paragraph, last sentence).

16.2 With regard to the question whether, at the third level of the convergent approach, the provisions of Article 13(1) RPBA 2020 are to be applied in addition to those of Article 13(2) RPBA 2020, the board notes that Article 13(2) RPBA 2020 does not contain any explicit reference to the first paragraph of this article. However, the Explanatory remarks on Article 13(2) RPBA 2020 contain the following guidance:

"At the third level of the convergent approach, the Board may also rely on criteria applicable at the second level of the convergent approach, i.e. as set out in proposed new paragraph 1 of Article 13." (Document CA/3/19, section VI, Explanatory remarks on Article 13(2), fourth paragraph; emphasis added by the board.)

From this the board concludes that, at the third level of the convergent approach, the boards of appeal are free to use or not use the criteria set out in Article 13(1) RPBA 2020 when deciding, in the exercise of their discretion in accordance with Article 13(2) RPBA 2020, whether to admit an amendment made at this stage of the proceedings.

In this respect, Article 13(2) RPBA 2020 and Article 13(1) RPBA 2020 are also differently worded. In contrast to Article 13(2) RPBA 2020, the legislator has clarified in Article 13(1) RPBA 2020, by means of the explicit reference in the second sentence to new Article 12(4) to (6) RPBA 2020, that the criteria specified in these paragraphs and already applicable at the first level of the convergent approach also apply accordingly to any submissions made at the stage when the second level of the convergent approach applies (see also document CA/3/19, section VI, explanatory remarks on Article 13(1), second paragraph, second sentence).

16.3 Where, as in the present case, Article 13 RPBA 2007, and not Article 13(2) RPBA 2020, applies to a discretionary decision taken at the third level of the convergent approach, the board's view is that it is likewise free to use the criteria of Article 13(1) RPBA 2020 in addition. It is not apparent from either the transitional provisions of Article 25 RPBA 2020 or the explanatory remarks why the use of the criteria of Article 13(1) RPBA 2020 should be any different when Article 13 RPBA 2007, rather than Article 13(2) RPBA 2020, is to be applied at the third level of the convergent approach.

16.4 At the same time, however, the board considers that the criteria of Article 13(1) RPBA 2020 correspond in essence to those developed by the case law in the context of Article 13(1) RPBA 2007 (see also decisions T 634/16, point 14, second paragraph, of the Reasons, and T 32/16, point 1.1.3, second paragraph, of the Reasons). Since the board had already based its discretionary decision under Article 13(1) and (3) RPBA 2007 whether to admit the fourth auxiliary request into the appeal proceedings on criteria set out in Article 13(1) and (3) RPBA 2007, as well as those developed by the case law in the context of those provisions (see points 4 to 14 above), it saw no reason to apply the criteria of Article 13(1) RPBA 2020 in addition.

[...]

Conclusion on the appeal

21. Since none of the appellant's main request and first to fourth auxiliary requests is allowable, the appeal is to be dismissed.

Reimbursement of appeal fee

22. The appellant requested reimbursement of the appeal fee.

23. Rule 103(1)(a) EPC stipulates that the appeal fee has to be reimbursed where the board deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

24. The precondition for reimbursement of the appeal fee pursuant to Rule 103(1)(a) EPC, namely that the appeal be allowable, is not met in the present case. According to established case law, "allowable" is to be understood in the sense that the board, in substance at least, "follows" the relief sought by the appellants, in other words that it allows their requests (J 37/89, OJ EPO 1993, 201, Reasons, point 6). That is not however the case here, since the appeal is to be dismissed (see point 21 above).

25. The request for reimbursement of the appeal fee is therefore to be refused.

Apportionment of costs

26. The appellant requests "apportionment of costs for all costs relating to the entire appeal proceedings" for the reason that the opposition division rejected a further auxiliary request as "fallback position" to a claim including the additional feature of original claim 2. According to the appellant, the lack of novelty of such claim had not been argued prior to the date of the oral proceedings before the opposition division.

27. Under Article 104(1) EPC, each party to opposition proceedings must bear the costs it has incurred. However, the board may, for reasons of equity, order a different apportionment of costs. According to established case law (see Case Law, 9th edition 2019, III.R.2), a different apportionment of costs is justified if the conduct of one party is not in keeping with the care required. In view of the provisions of Article 104(1) EPC and established case law, the board has no doubt that the conduct of the opposition division cannot justify a different apportionment of costs. Thus, Article 104(1) EPC does not apply in the present case. Article 16 RPBA 2020, which applies in accordance with Article 25(1) RPBA 2020, is also not applicable in the present case, since this provision refers to "a party".

28. The request for apportionment of costs is therefore to be refused.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for reimbursement of the appeal fee and the request for apportionment of costs are refused.