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 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 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 2024/20 - Appeal against cost apportionment

Key points

•  This is an appeal regarding the apportionment of costs. Well, more precisely, against a decision of the OD under Rule 88(3) EPC to fix the costs.
• The representative of the patentee had forgotten the oral proceedings (or at least said so) and did not attend them (they were held in The Hague). The patent was revoked, with an apportionment of costs against the opponent, for the costs of the 4 opponents for the oral proceedings. The patentee did not appeal that decision.
• The formalities officer of the OD then fixed the costs under Rule 88(2) with an order of 14.02.2020 That order is, however, not visible in the online file.
• The patentee then requested a decision of the OD. The OD essentially maintained the order.
• The patentee filed an appeal against the OD's decision. The appeal is admissible; the amount of costs exceeded the appeal fee - by far, the total is about 24k EUR (Rule 97(2)).
•  The Board:  "there is no reason to doubt that the other costs listed (22.5 hours of preparation) were necessary to prepare for the oral proceedings in view of the number of opponents and documents and filings forming part of the proceedings opposition. Even if some of these documents and writings had probably already been studied at an earlier stage of the procedure, it is well known that good preparation for oral proceedings requires an in-depth study of the case, which implies time significant preparation. The board therefore accepts that opponent 2's preparation costs amount to EUR 6251.77." 
• " Opponent 2 indicated a preparation time of 22.5 hours and the Opponent 3 of 20.5 hours, which is certainly different from the number of hours indicated by Opponent 4, but still considerably higher than the day of preparation argued by the applicant. However, it is well known that depending on the importance of the same case for one or the other party, the time invested in preparing for oral proceedings may vary. The board has no concrete indications to cast doubt on the accuracy of the figures provided by opponent 4. Therefore, taking into account opponent 4's travel expenses, the appellant must reimburse ( 1299.27 + 9306)= 10605.27 EUR to opponent 4." 
• 
  

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 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 0876/16 - Acting courteously to the Board

Key points

• In this opposition appeal, the Board cancels oral proceedings scheduled for Monday on Friday afternoon by fax. On Thursday, the Registrar had contacted the opponent by phone about whether it maintained its request for oral proceedings (and an assistant of a representative forgot to send out the written confirmation of the withdrawal of the request for oral proceedings). 
• The patentee's representative shows up on Monday morning and requests an apportionment of costs. The Board does not grant this request, because the representative works in a Munich firm.
• "Den Vertretern der Beteiligten [Patentee]  wurde am Nachmittag des 6. März 2020 per Faxschreiben von der Geschäftsstelle der Kammer vorab mitgeteilt, dass der anberaumte Termin für die mündliche Verhandlung am 9. März 2020 aufgehoben wurde.
  Dies mag sehr kurzfristig gewesen sein, aber aus Sicht der Kammer dennoch rechtzeitig genug, um den Vertreter der Beschwerdeführerin, der Mitglied in einer Kanzlei in München ist, noch rechtzeitig vor seiner geplanten Anreise nach Haar zu informieren.
  Die Tatsache, dass die Kanzlei ihren Vertreter nicht rechtzeitig von der Aufhebung der mündlichen Verhandlung informierte, kann nicht der Gegenseite zur Last gelegt werden."
• Importantly, the Board qualifies the failure of the representative of the opponent to confirm the withdrawal of the request of oral proceedings, announced by phone, to be a violation of Article 6 of the epi Code of Conduct, and includes a remark to this effect in the decision. 
• "In all dealings with the European Patent Office and its employees, a member shall act courteously, and shall do everything possible to uphold the good reputation of this Institute and its members." (Article 6 CoC)
• Article 7(5)(e) Code specifies that "breaches of the Code should be brought to the notice of the Disciplinary Committee in writing."

T 0876/16 - link

5.3 Den Vertretern der Beteiligten [Patentee]  wurde am Nachmittag des 6. März 2020 per Faxschreiben von der Geschäftsstelle der Kammer vorab mitgeteilt, dass der anberaumte Termin für die mündliche Verhandlung am 9. März 2020 aufgehoben wurde. Dies mag sehr kurzfristig gewesen sein, aber aus Sicht der Kammer dennoch rechtzeitig genug, um den Vertreter der Beschwerdeführerin, der Mitglied in einer Kanzlei in München ist, noch rechtzeitig vor seiner geplanten Anreise nach Haar zu informieren. Die Tatsache, dass die Kanzlei ihren Vertreter nicht rechtzeitig von der Aufhebung der mündlichen Verhandlung informierte, kann nicht der Gegenseite zur Last gelegt werden.

5.4 Die Kammer betrachtet das Vorgehen des Vertreters der Beschwerdegegnerin, der trotz gegenteiliger Zusage keine schriftliche Bestätigung seiner am Telefon getätigten Aussagen eingereicht hat, als Verletzung der Höflichkeitspflicht gemäß Artikel 6 der epi-Richtlinien für die Berufsausübung. Dessen ungeachtet kann auch dieses Verhalten keine Kostenentscheidung nach Artikel 104 (1) EPÜ rechtfertigen.

5.5 Aus den oben genannten Gründen ist die Kammer der Ansicht, dass eine Kostenentscheidung nach Artikel 104 (1) EPÜ zugunsten der Beschwerdeführerin nicht gerechtfertigt ist. Der Antrag der Beschwerdeführerin auf Kostenverteilung ist daher zurückzuweisen.

Entscheidungsformel

Aus diesen Gründen wird entschieden:

1. Die angefochtene Entscheidung wird aufgehoben.

2. Das Patent wird widerrufen.

3. Der Antrag der Beschwerdeführerin auf Kostenverteilung wird zurückgewiesen.

T 2350/15 - Cost apportionment for not attending oral proceedings

Key points

• In this opposition appeal, the preliminary opinion of the Board is to maintain the patent as granted. The opponent informs the Board that they will not attend oral proceedings adding that “this did not mean that it was withdrawing its appeal or its request for oral proceedings”.
• The Board orders a cost apportionment. “By maintaining its request for oral proceedings, the appellant/opponent thus not only obliged the Board to hold the oral proceedings but also obliged the appellant/patent proprietor to come to the oral proceedings and to prepare for them. Under these circumstances, pursuant to Article 104(1) EPC and Article 16(1)(e) and 16(2) RPBA 2020, the Board finds it equitable that the appellant/opponent bears the costs (for preparation, travel and presence) incurred by the appellant/patent proprietor for the oral proceedings before the Board.”.
• I note that the opponent was “Strawman Limited” represented by a large British patent attorney firm. I assume that they will pay upon first request.
• The Board also notes, under Art.123(2), that “it is established case law that claims should not be read alone but in the context of the patent as a whole with a mind willing to understand [...] This means that a word or expression in a claim must always be given the same meaning as the one the author of the patent wished to give it.”.

EPO T 2350/15 - link



3. Objection pursuant to Article 100(c) EPC

[...]


3.1.1 Interpretation of claim 1

In the Board's opinion, it is established case law that claims should not be read alone but in the context of the patent as a whole with a mind willing to understand (e.g. T 0190/99, point 2.4 of the Reasons; T 0556/02, point 5.3 of the Reasons). This means that a word or expression in a claim must always be given the same meaning as the one the author of the patent wished to give it. This line of thought is confirmed in T 1592/14 (point 5 of the Reasons), which was cited by the appellant/patent proprietor.

In the present case, for a person skilled in the art having read the patent as a whole, it is clear that a mistake was made in claim 1, namely "first" and "second" were inverted in this litigious feature. This is evident not only from a whole-content-disclosure point of view but also from a technical point of view.

Indeed, the object of the patent is a suturing apparatus, and it is only once the suture has passed through the tissue that it should be released from the needle. Or, said differently, it makes no technical sense to release the suture during the movement which brings the suture through the tissue, namely the movement from the first to the second position. Hence, even if the person skilled in the art had read the claim alone, contrary to the opinion of the appellant/opponent, they would have immediately understood that in the claim wording the two words "first" and "second" had been inverted.

This also means that the decisions T 0431/03 (point 2.2.2 of the Reasons), T 1018/02 (point 3.8 of the Reasons), T 1395/07 (point 4 of the Reasons) and T 0197/10 (point 2.3 of the Reasons) cited by the appellant/opponent in any case do not apply because they start with the assumption that the claim wording is clear and makes technical sense in itself for the person skilled in the art, which as explained above is not so in the present case.

The technically sensible interpretation of claim 1 is supported by the rest of the specification since, indisputably throughout the description and figures, it is when the needle goes back from the second to the first jaw, or more precisely once the suture is retained, that the suture is released from the needle.

T 0101/17 - The costs of inadmissible requests

Key points

• The Board considers the claims as granted to be not novel over D3 and does not admit the auxiliary requests. The novelty attack was already in the notice of opposition, and the OD had considered the claims to be not novel in the preliminary opinion and in the impugned decision. The patentee appeals and auxiliary requests are filed with the Statement of grounds. The Board concludes that the requests should have been filed in the first instance proceedings and does not admit them (Article 12(4) RPBA 2007).
• The opponent requests an apportionment of costs. 
• “The respondent [opponent] submitted that although the auxiliary requests were found inadmissible, it had nonetheless been necessary to prepare for the scenario that they would be admitted and to subsequently address them content-wise. This took the representative a total of 35 hours. Such time and expense could have been avoided had the appellant-proprietor refrained from filing these requests and restricted its case to a defence of the claims as granted (as would have been the proper thing to do in the circumstances).”
• The Board does not grant that request. The Board cited T1848/12: “Preparations for discussing the admission of late-filed documents into the proceedings during the opposition-appeal proceedings and, if they are admitted, preparations for discussing their relevance in respect of the patentability of the claimed subject-matter are part of the normal work that can be expected of any party to the proceedings and/or its representative in opposition-appeal proceedings.”
• I note that T1848/12 does not say that ‘preparations for discussing their relevance in respect of the patentability of the claimed subject-matter’ are ‘part of the normal work’ for inadmissible requests. T1848/12  says so explicitly only for requests that are admitted.
• I'm also not sure if the remark in T1848/12 applies to the vexatious filing of requests (though the opponent does not seem to have argued that the filing of the requests in the present appeal was vexatious or an abuse of procedure, though see below).
• The present Board adds that: “The Board further observes that in order to establish any causal link between the respondent's [opponent's] expenses and the appellant-proprietor's behaviour, the respondent [opponent] would have to show that it was particularly the belated filing of requests that caused the expense rather than the filing of requests as such. As it was the appellant's [sic, I think ' opponent'] argument that the filing of the auxiliary requests in appeal (rather than at the stage of opposition) was abusive and improper, a comparison between timely and belated filing of the requests would be necessary in order to establish causality of damage in the form of attorney's fees.”
• In my view, the comparison could more logically be made to the patentee not filing the inadmissible requests in appeal. If we assume that filing the requests in the appeal stage was unreasonable because they were clearly inadmissible, it can also be said that a diligent patentee would have refrained from filing such obviously inadmissible requests. For Article 12(4) RPBA 2007 we assume that the patentee diligently (or at least consciously) decided to not file the requests before the OD, but the present Board assumes for Art.104 that a diligently acting patentee would have filed the requests. 
• With the present Board's analysis, the late filing of (numerous) requests (or documents) appears to be a rather low-risk strategy, even if the submissions are obviously inadmissible, with clear advantages (distracting and burdening the opponent) and few disadvantages (perhaps that the Boards holds all requests inadmissible whereas they would have admitted some if only few AR's were filed). 

EPO T 0101/17 -  link

4.3 In light of the foregoing approach that the Board endorses, it might be a convenient moment to take a look at the course of opposition proceedings in this case.

Already the notice of opposition alleged a lack of novelty of the patent as granted over document D3. In its annex to the summons to oral proceedings, the opposition took the provisional view that "the subject matter of independent claim 1 of the patent-in-suit lacks novelty also over D3", amongst other documents that it also saw as novelty destroying. The decision under appeal confirmed the finding that "the subject matter of claim 1 is not novel over D3". When the opposition division came to this conclusion during oral proceedings, the protocol notes that "the chairman gave the opportunity to the patent proprietor to file further requests. The patent proprietor confirmed that it did not wish to file any further request." It was only at the stage of appeal that the appellant-proprietor decided to file requests meant to overcome a potential lack of novelty of the patent as granted, and requested that, should the Board find any of these requests novel and compliant with Art. 123(2) EPC, it remit the case to the department of first instance for further examination of inventive step issues.

T 0702/15 - Always keep something pending

Key points

• The proprietor withdraws the appeal shortly before the oral proceedings. The opponent then requests a 'different apportionment of costs' (cost order against patentee). The Board is, of course, decide on the request for apportionment. The Board does not order a cost apportionment, because “an appellant is entitled to withdraw its appeal at any time. In view of the principle of free party disposition, this right may not be restricted.” As a comment, CLBA III.R.2.4 actually continues the cited sentence as follows: "this right may not be restricted, even implicitly by the threat of cost apportionment, on the grounds that oral proceedings have been scheduled and the opposing party cannot be notified in time".
• The opponent added that “[the patent in suit] was the parent application of four divisional applications, directed to similar subject matter. The appellant withdrew its approval of the text of those already granted; two of them were still in examination proceedings. By withdrawing its appeal, the appellant was preventing any decision on that subject-matter.”
• The Board does not see a ground for a cost apportionment in this. The Board adds that “Article 76(1) and Rule 36 EPC stipulate the conditions under which a divisional application can be filed. The board fails to see any basis in the EPC for a different treatment of a divisional application if a patent arising from an earlier application is no longer defended by its proprietor.”
• As a comment, I note that the OD's decision to revoke the patent is now final. As to whether such a decision has a res judicata or estoppel effect on the divsional, see CLBA II.F.2.4.3.

EPO T 0702/15 -  link

Reasons for the Decision

1. The appeal is admissible.

2. As the appellant in the present appeal proceedings has withdrawn its appeal, the sole issue remaining is the request of respondent 1 that all the costs incurred during these appeal proceedings be awarded against the appellant.

3. Costs (Article 104(1) EPC)

3.1 Under Article 104(1) EPC, each party in opposition proceedings bears the costs it has incurred, unless the opposition division, for reasons of equity, orders a different apportionment of costs. This principle applies equally to opposition-appeal proceedings in view of Article 111(1) EPC in conjunction with Rule 100(1) EPC (see T 2165/08 of 6 March 2013, Reasons 45).

3.2 Respondent 1 requested that the board award all of its costs against the appellant for the following reasons.

3.2.1 By withdrawing its appeal at a late stage, the appellant had obliged respondent 1 to perform a considerable amount of unnecessary preparatory work.

However, according to case law (Case Law of the Boards of Appeal of the EPO, 9th edition 2019, III.R.2.4), an appellant is entitled to withdraw its appeal at any time. In view of the principle of free party disposition, this right may not be restricted. As a rule, the benefits that respondents derive from the withdrawal of the appeal offset the costs they have incurred.

3.2.2 Respondent 1 also argued that the patent in suit had considerable economic value and was the parent application of four divisional applications directed to similar subject-matter. The appellant had also withdrawn its approval of the text of those two divisional applications already granted; the remaining two were still in examination proceedings. According to respondent 1, it was clear from the appellant's passivity with regard to these appeal proceedings that it had never intended to defend its case. It had not filed any response to the issues raised in the responses to the statement of grounds of appeal. It did not reply to the communication of the board in preparation for oral proceedings. It had also not requested interpretation. The withdrawal formed part of the patent proprietor's strategy of trying to avoid any substantive decision on the claimed subject-matter. A similar strategy had been used in the family of divisional applications arising from the European patent which resulted in appeal T 211/15. Intentionally prolonging legal uncertainty about the claimed invention should not be allowed.

However, respondent 1 is relying only on assertions about what the strategy of the appellant might have been. The present appeal is based on the decision of the opposition division that the patent in suit contained added subject-matter. The board had informed the parties in a communication annexed to the summons to oral proceedings that it intended to examine the issues of the admissibility of requests, added subject-matter and Rule 80 EPC, and to remit the case to the opposition division if any request before it did not show any of those deficiencies. The withdrawal of the appeal did not prevent the board from taking a decision on the patentability of the claimed subject-matter, since it was not minded to examine all of the issues raised in the opposition proceedings.

3.2.3 Lastly, respondent 1 objects to the fact that the EPO could grant patents based on divisional applications which related to subject-matter granted and then subsequently abandoned.

Article 76(1) and Rule 36 EPC stipulate the conditions under which a divisional application can be filed. The board fails to see any basis in the EPC for a different treatment of a divisional application if a patent arising from an earlier application is no longer defended by its proprietor.

In addition, the powers of a technical board of appeal are limited to examining the case before it. The EPC does not allow a technical board to instruct an examining division dealing with a case which is not the one under appeal. Under Article 18(1) EPC, only the examining division is responsible for the examination of the case before it.

Furthermore, the board fails to see any connection between the examination of divisional applications and the present request regarding a different apportionment of costs.

3.3 The board thus sees no reason to order a different apportionment of costs for the present proceedings.

Order

For these reasons it is decided that:

The request of respondent 1 for a different apportionment of costs is refused.

T 2313/15 - Only arguments before OD

Key points

• In this opposition appeal, the patentee did not submit auxiliary requests before the OD and did not request oral proceedings. The OD revoked the patent only on the ground of lack of novelty of one claim over D2, without holding oral proceedings. In appeal, the patentee defends that the claims as granted are novel over D2, and also over D1 and D3, with success. The Board considers the claims as granted novel and remits the case. The opponent appears overall unhappy with the procedural course of action. The opponent challenges admissibility of the appeal,  protests against the remittal, and requests an apportionment of costs.
• As to admissibility, the Board: "In a case such as the present one, where the appeal lies against a decision based on a sole ground (lack of novelty) a statement of grounds is sufficiently substantiated in the sense of Rule 99(2) EPC if it addresses that sole ground in a manner for the Board and the other party to understand why the Appellant considers the decision to be incorrect." "The Respondent-Opponent has rather argued that the Appellant [patentee] in their statement of grounds should have dealt with all grounds raised in opposition. This view however has neither a basis in the Convention nor is it supported by jurisprudence."
• As to the remittal: "The Respondent-Opponent requests the Board to make a final decision rather than remit the case to the Opposition Division." "In the present case all grounds of opposition under Article 100 EPC had been raised against all of the claims of the patent, based on various citations. The Opposition Division, however, issued its decision immediately, without oral proceedings, based only on the single ground of lack of novelty of claim 15 over a single document [D2, see r.3]. " 
• " In the light of the above, the Board considers that having a final decision without remittal would largely exceed the primary function of the appeal proceedings as judicial review of a first instance decision to such an extent that outweighs, in the present case, the public interest for procedural economy and the legitimate wish of the Respondent-Opponent to have such decision made by the Board." 
• As to the request for apportionment of costs (i.e. that the patentee pays the costs to be made by the opponent in the future second proceedings before the OD): the Board sees no ground.
• The fact that patentee dealt with all of opponents attacks before the OD " only by argument, without submitting auxiliary requests and without requesting oral proceedings, is a legitimate defence against an opposition, though it runs the calculated risk of an immediate contrary decision." 

• " Thus, the Appellant-Proprietor had no particular obligation to request oral proceedings before the Opposition Division. Their right to appeal or to file further requests on appeal is not affected by the mere fact that they did not request oral proceedings [before the OD]. The Board fails to see any legal basis for the implied assertion of the Respondent that the rights of the Appellant-Proprietor in the appeal proceedings are somehow more restricted because they did not request oral proceedings." 

EPO T 2313/15 -  link

Reasons for the Decision

1. Admissibility of the appeal

1.1 The Respondent-Opponent objects that the statement of grounds only addresses novelty of claim 15 and is therefore not a complete case in the sense of Article 12(2) RPBA. On this ground the appeal is, according to the Respondent, inadmissible.

1.2 Concerning the disputed aspect of the admissibility, the extent of the required reasoning and sufficient substantiation, this is governed by Article 108 and Rule 99(2) EPC. The examination of the question whether the requirements of Article 108 EPC, third sentence in combination with Rule 99(2) EPC are met is made on the basis of the contents of both the statement of grounds of appeal and of the decision under appeal, T 162/97, see Case Law of the Boards of Appeal, 2016, 8th. edition (CLBA), IV.E.2.6.3. In a case such as the present one, where the appeal lies against a decision based on a sole ground (lack of novelty) a statement of grounds is sufficiently substantiated in the sense of Rule 99(2) EPC if it addresses that sole ground in a manner for the Board and the other party to understand why the Appellant considers the decision to be incorrect. That the present statement of grounds addresses the sole ground for revocation, and in sufficient detail, is undoubtedly the case. Nor has it been argued that this would not be so.

1.3 The Respondent-Opponent has rather argued that the Appellant in their statement of grounds should have dealt with all grounds raised in opposition. This view however has neither a basis in the Convention nor is it supported by jurisprudence. Neither of the two decisions cited by the Respondent is indeed concerned with the question of admissibility of an appeal. T 396/98 deals with the issue of the extent to which an opposition division's decision is binding on the corresponding appeal board, see Reasons, point 2 - i.e. whether the board can also review findings of the opposition division that were in favour of the appellant party-, which is not related to the question of admissibility of the appeal. T 240/04, on the other hand concerns the question of admittance of an auxiliary request, see Reasons points 16.1-16.3.

1.4 As otherwise all formal requirements of Article 108 and Rule 99 EPC are met, the Board concludes that the appeal is admissible.

T 0054/17 - (1) Interruption of proceedings

Key points

• The Board decides that it is itself competent to decide on any interruption of the proceedings under R142 EPC rather than the Legal Division, following T 854/12. ( Dec. Pres. OJ 2013 p.600 says that sole responsibility for the interruption and resumption of proceedings is vested with the Legal Division). 
• Interruption of proceedings has retroactive effect, is effective from the date of the insolvency event in case of bankruptcy of the proprietor (Rule 142(1)(b) EPC) and is normally declared once the EPO has knowledge of the event (e.g. of the bankruptcy).
• However, in this case, the patentee had continued the proceedings for years after the bankruptcy without invoking the bankruptcy until shortly before the oral proceedings in appeal.
• Based on the principle of good faith, the Board finds the patentee in effect to be barred from invoking the bankruptcy in what appears to be a kind of estoppel. Hence, the proceedings are not interrupted.
• The patentee brought up the bankruptcy of the (former) joint patentee only two days before the oral proceedings in appeal, which were then postponed. The Board awards a cost apportionment against the patentee.
• As a note, the decision was given on 16.08.2018 in oral proceedings but notified in writing only about a year later on 08.08.2019. Overall timeline: filing in 23.11.2000 (so overall 19 years for grant and opposition), first and sole communication in 2006, grant March 2010. First OD decision March 2014 (only lack of novelty over D1) remittal in first appeal decision 07.10.2015 (T1195/14), second OD decision November 2016 (not novel over D4), accelerated proceedings in the second appeal. Does the EPO really needs 19 years to decide on whether this claim 1 is a patentable invention? (see also the next post about the Board deciding that claim 1 is insufficiently disclosed because it uses unusual and undefined terms for the distinguishing features).

A further post about the part of the decision about unusual parameters will follow in due course.



EPO T 0054/17 - link




EPO Headnote
1. Wenn eine Beschwerde vor der Beschwerdekamme anhängig ist, hat die Rechtsabteilung keine ausschließliche Zuständigkeit für die Frage der Unterbrechung des Verfahrens (siehe 1.4 der Entscheidungsgründe).

2. Setzt ein Patentinhaber in Kenntnis der Unterbrechungs-voraussetzungen, die ausschließlich in seiner Sphäre liegen, nach dem Wegfall der Unterbrechungsvoraussetzungen das Verfahren über Jahre uneingeschränkt fort, ohne sich darauf zu berufen, so erscheint es unbillig die Unterbrechung zu einem so späten Zeitpunkt geltend zu machen, mit der Folge, dass das bis dahin erfolgte Verfahren, an dem er bis dato aktiv mitgewirkt hat, zu wiederholen wäre. Dies widerspricht dem Grundsatz von Treu und Glauben (siehe 1.5 der Entscheidungs-gründe).

[Hn. 3 and 4 omitted]

Entscheidungsgründe

1. Unterbrechung des Verfahrens


1.1 Gemäß Regel 142 (1) b) EPÜ wird das Verfahren unterbrochen, wenn der Patentinhaber aufgrund eines gegen sein Vermögen gerichteten Verfahrens aus rechtlichen Gründen verhindert ist, das Verfahren fortzusetzen. Die Unterbrechung tritt automatisch ein und ist stets von Amts wegen zu berücksichtigen (J ../87, ABl. EPA 1988, 323). Gemäß § 80 Abs.1 der deutschen Insolvenzordnung (DE-InsO) geht mit Eröffnung des Insolvenzverfahrens das Recht des Schuldners, das zur Insolvenzmasse gehörende Vermögen zu verwalten auf den Insolvenzverwalter über, so dass hier am 30. Januar 2015 ein Unterbrechungstatbestand nach Regel 142 (1) b) EPÜ vorlag. Wird das Verfahren unterbrochen, beginnen die am Tag der Unterbrechung laufenden Fristen, mit Ausnahme der Frist zur Stellung des Prüfungsantrags und der Frist zur Zahlung der Jahresgebühren, an dem Tag von Neuem zu laufen, an dem das Verfahren wieder aufgenommen wird (Regel 142 (4) EPÜ). Mitteilungen und Entscheidungen des EPA, die in der Zeit zwischen dem Tag der Unterbrechung und dem Tag der Wiederaufnahme ergangen sind, sind gegenstandslos und sind nach Wiederaufnahme des Verfahrens erneut zuzustellen.

T 0105/14 - The Netherlands as opponent

Key points

• In this opposition-appeal about a vaccine, the opponent is "The Kingdom of the Netherlands, represented by the Minister of Public Health, Welfare and Sports". Let me emphasize at the outset that it is otherwise a normal Notice of opposition with inventive step attacks and attacks based on insufficient disclosure competently drafted by a professional representative - no political statements or morality objections.
• The case is also interesting about a request for apportionment of costs. The OD had revoked the patent for lack of inventive step. The Board issues its negative preliminary opinion. The patentee then announces that it will not attend the oral proceedings with a letter dated 3 April but submitted only on 9 April, without a courtesy copy being sent to the opponent; the oral proceedings were scheduled for 12 April. The opponent requests apportionment of costs: " [Patentee's] behaviour not only offended against the basic rules of courtesy but also deprived the respondent of any possibility to timely cancel any hotel and flight reservations." 
• " The board agrees with the respondent on the relevance of the case law concerning the equitable obligation on every party summoned to oral proceedings to inform the board and, following the basic rules of courtesy, the other parties as soon as that party knows that it will not attend as summoned." 
• " The board agrees with the respondent that such basic rules [of courtesy] are much desirable and certainly contribute to a fair development of all proceedings, not only of appeal proceedings. Unfortunately, most of these rules are not enshrined or laid down in the Convention, let alone any means and measures to enforce them." (As a comment, in my view the term 'reasons of equity' in Article 104 EPC can very well encompass "basic rules of courtesy", especially if these rules "contribute to a fair development of all proceedings". Clearly, the term "equity" refers to unwritten rules, so the observation that "these rules are not enshrined or laid down in the Convention" seems beside the point ).
• " In the board's view, it is not possible to conclude with certainty from the date on the appellant's letter that a decision was already taken on this date. The board cannot be sure of the appellant's decision-taking process. Appellant's letter may have been drafted on 3 April but only approved at a later date." 
• " [T]he decision whether to attend or not oral proceedings as summoned depends always not only on the party itself but on the other parties' actions and behaviour. In the light thereof, it is always up to a party to find and decide on the most appropriate conditions and suitable ways for arranging its travel and accommodation reservations accordingly. " 

EPO T 0105/14 - link

Apportionment of costs

22. The board agrees with the respondent on the relevance of the case law concerning the equitable obligation on every party summoned to oral proceedings to inform the board and, following the basic rules of courtesy, the other parties as soon as that party knows that it will not attend as summoned. It is also established by this case law that, under certain circumstances and in certain cases, if a party fails to attend as summoned, an apportionment of costs in favour of another party, who has attended as summoned, may be justified for reasons of equity in accordance with Article 104(1) EPC (cf. "Case Law", supra, IV.C.6.2.2, 990). In support of its arguments regarding the request for apportionment of costs, the respondent has also mentioned decision T 280/15 of 7 March 2019, wherein the board competent in that case decided an apportionment of costs in favour of the party attending as summoned (cf. point XVII supra).

T 0626/15 - Withdrawal appeal and cost apportionment

Key points

• In this opposition appeal, only the patentee appealed. The patentee withdraws his appeal at the end of the oral proceedings. The opponent then requests a cost apportionment.
• The Board refuses the cost apportionment because the appellant is always entitled to withdraw his appeal. The Board, in translation: "This right,  which is based on the principle of the free disposal of the proceedings, can not be limited - even implicitly by the threat of apportionment of costs - simply because oral proceedings have been convened and the respondent concerned could not be informed in good time. Even participation in oral proceedings, convened by the Board for the purpose of deciding on the appeal, can not be held against a party, since it represents the last opportunity to defend his case in the last instance for all parties involved in the procedure."
• This is in line with established case law (e.g. T 490/05).

EPO T 0626/15 -  link


Machine translation from French

Reasons for the decision

1. The request is not granted for the reasons which follow.

2. By law, under Article 104 (1) EPC, each of the parties to the opposition proceedings is liable for the costs incurred by it, unless otherwise apportioned by the Board to the extent that the equity requires so.

3. In the present case the appellant, both in appealing the contested decision and in requesting oral proceedings, and even withdrawing her appeal during the oral procedure provided for, merely used procedural rights which were absolutely offered by the EPC.

4. The use of an absolute procedural right does not in principle constitute an abuse (T 674/03).

5. As regards the withdrawal of the appeal in particular, it should be noted that the appellant is always entitled to withdraw his appeal. This right, which is based on the principle of the free disposal of the proceedings, can not be limited - even implicitly by the threat of apportionment of costs - simply because oral proceedings have been convened and the respondent concerned could not be informed in good time. Even participation in oral proceedings, convened by the Board for the purpose of deciding on the appeal, can not be held against a party, since it represents the last opportunity to defend his case in the last instance for all parties involved in the procedure.

The costs attached to it may appear to be ex post facto preventable, but it may be assumed that the benefits to the respondent of withdrawing an action outweigh the costs it must bear. This is also true where the appeal remains pending only in form, because of the request for apportionment of costs (T 490/05).

6. Moreover, in the present case there is no evidence that the appellant acted in a faulty or reckless manner and with such lightness as to justify a different apportionment of costs, and especially that those whose repayment are solicited are those usually engaged by a party to defend its interests in the course of an appeal.

7. No abuse having been established, it follows that the request is unfounded and must therefore be rejected.

Device

For these reasons, it is decided as follows

1. The respondent's request for apportionment of costs is dismissed.

2. The appeal procedure is closed.

T 0280/15 - Cost apportionment

Key points

• In this opposition appeal, the appellant (patentee) announced on the day before the oral proceedings, at 18:23, that it would not attend. The Board's preliminary opinion was negative for the patentee.
• The Board orders the patentee to pay the costs for attending the oral proceedings, including 12 hours attorney time (at 250 EUR/hour, for an Italian attorney firm), as well as the travel and lodging costs. 

EPO T 0280/15 -  link

3. Kostenverteilung

3.1 Die Beschwerdegegnerin beantragte Kostenverteilung zu ihren Gunsten bezüglich Reise-, Unterbringungs-, Verpflegungs- und Mietwagenkosten, sowie für 12 Stunden in der Höhe von 250 EURO pro Stunde als Aufwandsentschädigung für die Vorbereitung des zugelassenen Vertreters.

3.2 Grundsätzlich trägt für die Verfahren vor dem EPA jede Partei ihre entstandenen Kosten selbst. Gemäß Artikel 104(1) EPÜ und Artikel 16(1)(c) VOBK kann auf Antrag jedoch die Kammer aus Billigkeitsgründen eine andere Kostenverteilung anordnen, für Handlungen oder Unterlassungen welche die rechtzeitige und effiziente Durchführung der mündlichen Verhandlung beeinträchtigen.

T 1777/15 - Apportionment of costs

Key points

• In this opposition appeal, the case is remitted based on an auxiliary request. The opponent (respondent) had requested that in the case of a remittal, "the costs it would incur in connection with the further prosecution before the first instance and any subsequent appeal proceedings be paid by the appellant".
• The Board refuses this request.
• "From the wording of Article 104(1) EPC ("costs [a party] has incurred" (underlining by the board)), Rule 88(2) EPC, which relates to a bill of costs, and Article 16(1) RPBA, it follows that a decision on an apportionment of costs cannot be made in respect of future costs"
• As a first comment, Rule 88(2) is completely irrelevant here because it is about the procedure for the fixing of the costs, which is a distinct and separate procedure from the decision to give a different apportionment of the costs. The bill of costs (invoices and the like) can indeed by submitted for costs already incurred, but that is precisely why the fixing of the costs is in a separate procedure. I find it somewhat concerning that this Board confuses these two procedures.
• Furthermore, there is an established line of case law (though a bit older) that in case of a remittal (for a newly filed document), the  "costs between the parties should be apportioned under Article 104 [...], in such a way that the late-filing party should normally bear all the additional costs caused by his tardiness" (T 326/87, hn, OJ 1992, 522, CLBA IV.C.6.3.3). As an example of a cost order for future costs after remittal: see T622/89: "The Opponent shall bear all the costs of the Patentee reasonably incurred in the course of the further prosecution of the opposition before the Opposition Division, and of any appeal therefrom." (which is cited in Singer/Stauder, 5th edition, Art.104 nr.32. 
• As the Board does not engage with existing case law, I don't find the Board's reasoning convincing. In addition, for interpreting a legal provision, one can often not restrict oneself to the plain text, but needs to take into account the case law, purpose and system, and the travaux as well, unlike the Board in this case. 
• The Board also appears to indicate that for the OD to hold inadmissible a request filed after the date for written submissions under Rule 116, the OD must give more reasons than the observation that the request is filed after that date. However, the Board states that "In the present case, no reasoning was given" and also that "Without any reasoning" , while at the same time acknowledging that the written decision of the OD includes the statement that the  opposition division did not admit this request "as it is late filed, Rule 116(2) EPC" and "for the reason of being late filed, according to Rule 116(1) EPC". The Board may find it grossly insufficient reasoning, I don't think the OD gave "no reasoning". 

EPO T 1777/15 - link

5. Auxiliary request 4: admissibility (Article 12(4) RPBA)

5.1 Claim 1 of auxiliary request 4 corresponds to claim 1 of auxiliary request 3, except that the first alternative referred to in point 4 above has been deleted.

5.2 The claims of auxiliary request 4 are identical to the claims of auxiliary request 6 filed before the opposition division at the oral proceedings. The opposition division did not admit this request "as it is late filed, Rule 116(2) EPC" and "for the reason of being late filed, according to Rule 116(1) EPC" (see points 1.17.18 and 2.8.1 of the decision under appeal and point 16.9 of the minutes). No further reasoning was given.

5.3 Article 12(4) RPBA gives the board the discretion to hold inadmissible requests which could have been presented or were not admitted in the first instance proceedings.

T 1093/17 - Appeal against adapted description

Key points

• In T 128/13, the Board had remitted the case back "to maintain the patent with claims 1 and 2 of the first auxiliary request [...]  and a description, and if need be, the drawings to be adapted thereto".  The OD thereafter took a (further) interlocutory decision fixing the text (including the description) in which the patent can be maintained in amended form. The opponent appealed against this decision.
• The opponent initially had objections under Article 123(2) EPC, which were given up. It had also argued objections under A83 and A84 because none of the examples of the patent was according to the amended claims.
• Both parties had requested a cost order against the other party because of an abuse of procedure of the other party.
• " Regarding the late filing of an adapted description by the [patentee] in the oral proceedings before the Board [in the first appeal] the present Board notes that the then Board explicitly stated that the Board "will not outright refuse that an amended description be submitted". [The] then Board explicitly ordered that the description be adapted to the allowable set of claims. Hence, the Board in the proceedings for T 128/13 did not see any procedural abuse in the late filing of an adapted description, and neither does the present Board.
• In arguing against a proposed adapted description in the subsequent opposition proceedings, the [opponent] is within its rights pursuant to Articles 101(1) and 113(1) EPC. It was obviously adversely affected by the impugned decision posted on 28 February 2017, and so it is within its rights to lodge an appeal against said decision pursuant to Article 107 EPC."

EPO T 1093/17 -  link

Summary of Facts and Submissions

I. The appellant (opponent) lodged an appeal within the prescribed period and in the prescribed form against the interlocutory decision of the Opposition Division maintaining European patent No. 1 409 344 in amended form.

The appeal follows a previous appeal in the present case on which decision T 128/13 dated 8 December 2015 has already been taken, with the order "to maintain the patent with claims 1 and 2 of the first auxiliary request filed with letter dated 6 November 2015 and a description, and if need be, the drawings to be adapted thereto". The order and the ratio decidendi of T 128/13 are res judicata for the present decision, which accordingly deals only with adapting the description and, if need be, the drawings to the claims already allowed.

T 2012/13 - Winner pays

Key points

• In this opposition appeal, the Board admits a new request during the first oral proceedings. At the opponent's requests, the oral proceedings are adjourned because a rebuttal of the amended claims, requires the filing of further technical reports. The Board allows the amended claims during the second oral proceedings.
• However, the Board gives a costs award against the patentee: the patentee has to pay 50% of the costs of the fees of the professional representative of the opponent for attending the second oral proceedings (excluding preparation work). 
• The second oral proceedings were on 7 July 2017. The decision was announced orally on 12 July 2017 (7 July being the only date of the summons ). I am not sure if this is very common. There are minutes of oral proceedings on 7 July 2017 lasting from 09:00 to 17:15 (link) and minutes of oral proceedings lasting from 08:45 to 08:55 (link). Those second minutes do not indicate that any of the parties were present and also do not indicate that they are about oral proceedings held on 12 July 2018. 
• 02.01.2019: I clarified that the summons was for 7 July. 

EPO - T 2012/13

VII. Dans une communication du 20 janvier 2017 en préparation d'une procédure orale prévue pour le 1er février 2017, la chambre a signalé que si une requête des requérantes était recevable et répondait aux exigences des articles 83 et 123 CBE, elle envisageait le renvoi de l'affaire devant la division d'opposition.

VIII. Une première procédure orale s'est tenue devant la chambre le 1er février 2017.

i) Durant cette procédure, les requérantes ont déposé un nouveau jeu de revendications modifiées, libellé requête subsidiaire 1 (ci-après requête du 1er février 2017). Au final, seule cette dernière requête a été maintenue par les requérantes.

ii) Comparée à la revendication 1 telle que délivrée (point II ci-dessus), la revendication 1 de la requête du 1er février 2017 comprend en plus la définition suivante du "liant": [] 

iii) L'intimée a contesté la recevabilité de cette requête au regard de son caractère tardif.

T 0169/14 - Apportionment of costs and OP

Key points

• In this opposition appeal case, the appellant (proprietor) informed the Board with a letter sent a few days before the oral proceedings, that it would not attend them. The Bord cancelled oral proceedings. The respondent requested that Board would order the appellant to pay its expenses for flight tickets.
• " In the board's view, there is an equitable obligation on every party summoned to oral proceedings to inform the EPO and the other party as soon as possible, once it has decided that it will not be attending or is withdrawing its request for them. Consequently, in cases where a party unduly delays its decision not to attend the oral proceedings, or the withdrawal of its request for them, or its communication of this to the board, an apportionment of costs in favour of the other party could be justified if the costs were directly caused by the fact that the notice was not filed in due time." 
• The Board does not order the apportionment of costs, mainly because the appellant had sent a copy of its letter to the respondent's attorney, and because it had included substantive arguments with its letter. 

EPO T 0169/14 -  link

Summary of Facts and Submissions

I. This case concerns an appeal filed by the patent proprietor (henceforth, the appellant) against the decision of the opposition division to revoke European patent []. [...]

IX. In a letter dated 10 November 2016, in response to the board's communication, the appellant provided further arguments, informed the EPO that he would not be attending the oral proceedings and withdrew his request for oral proceedings. The last line on page 3 of this letter reads as follows: "cc: Regimbau (Lyon office), Attn. [mr. X], Ref: OB0011 (by email)".

X. In a communication from the board dated 11 November 2016 and faxed to the parties the same day, the parties were informed that the oral proceedings scheduled for 16 November 2016 had been cancelled and that the proceedings would be continued in writing.

XI. In its letter dated 15 November 2016, the respondent submitted that it had incurred costs due to the late cancellation of the oral proceedings and requested that, pursuant to Article 16 RPBA, its representative's fees for preparing the oral proceedings before the board and his non-refundable travel expenses for the flight ticket be fully borne by the appellant. []

Reasons for the Decision

[] 2. Allowability of the appeal - claim 1 of the patent as granted - added subject-matter []

2.7 The board concludes that the ground for opposition pursuant to Article 100(c) EPC 1973 prejudices the maintenance of the patent as granted and, consequently, sees no reason to remit the case to the opposition division for further prosecution.

2.8 It follows that the appellant's main request is not allowable and, consequently, that the appeal is to be dismissed.

3. Apportionment of costs

3.1 After cancellation of the oral proceedings appointed for 16 November 2016, the respondent requested that, pursuant to Article 16 RPBA, its representative's fees for preparing them and his non-refundable travel expenses for the flight ticket, be fully borne by the appellant.