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 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 2377/13 - Appeal inadmissible

Key points

• The appeal of the prorpietor in this opposition appeal is not admissible, because he does not explain in the Statement of grounds why the decision of the Opposition Division is incorrect in finding that the technical effect is  not sufficiently demonstrated. Rule 99 EPC requires that the appellant comments on the reasons of the impugned decision.
• The patent proprietor did not attend the oral proceedings and announced so only two days in advance. A cost order is nevertheless not given, because the oral proceedings were not cancelled. The Board considers it the duty of any diligent representative to attend the oral proceedings, even if the preliminary opinion is favourable and the other party does not attend.

EPO T 2377/13 -  link

Motifs de la décision

1. Recevabilité du recours

1.1 La recevabilité du recours est contestée par l'intimée 1 dans sa réponse au mémoire de recours, arguant que le le contenu du mémoire de recours exposant les motifs du recours ne remplissait pas les conditions de la Règle 99(2) CBE.

1.1.1 Dans sa décision, la division d'opposition avait considéré que D7, qui était également le choix de la requérante au cours de la procédure d'opposition, constituait l'état de la technique le plus proche.

T 0258/13 - Apportionment of costs

Key points

• Withdrawal of a request for oral proceedings by a party in this opposition appeal, at 17:00 two days before, caused an apportionment of cost against that party.
• The apportionment is only for the costs for the professional representative, not for accompanying persons. " The Board points out, however, that for the oral proceedings only the presence of an authorized representative is necessary. The attendance or not of an accompanying person has no bearing on the conduct of the oral proceedings and is a matter of a deliberate choice from a party for which the other party need not be involved. To charge the appellant also with costs incurred by the accompanying person would contravene the principle of equity" 

EPO T 0258/13 - link

2. Apportionment of costs

2.1 The appellant withdrew its request for oral proceedings per telefax at 17:00 on 9 January 2017, i.e. only two days before the oral proceedings scheduled for 11 January 2017, de facto only one day in view of the lateness of the filing in the day (17:00).

In reaction, the respondent requested apportionment of costs pursuant to Article 104(1) EPC with two letters dated 10 January 2017, arguing that the appellant's request for the withdrawal of oral proceedings was filed in such a short notice that it resulted in unnecessary costs for the preparation of oral proceedings and for the cancellation of flights and accommodation for the authorized representative and the accompanying persons.

T1663/13 - Costs awarded and fixed

Key points

• The Board awards a cost apportionment against the opponent, and fixes the amount at about E 9000 (mostly, four days attorney time preparing for the cancelled oral proceedings).
• The opponent was a one-man patent attorney firm (as straw man), so hopefully for the professional representative involved, the client will pay. 

EPO T1663/13 -  link

Summary of Facts and Submissions

I. This decision concerns the apportionment of costs relating to the appeal filed by the opponent against the decision of the opposition division to reject the opposition against European patent No. 1 886 585. [...]

IV. In its decision, which was issued in writing on 15 May 2013, the opposition division rejected the opposition and, in view of the fact that the opponent had informed the EPO only at a very late stage that it would not be attending the oral proceedings, decided that the proprietor's request for apportionment of costs was justified and ordered that its travel and accommodation costs be borne in full by the opponent.

V. On 25 July 2013, the opponent filed an appeal. With the statement of grounds of appeal, submitted on 16 September 2013, the opponent requested that the decision under appeal be set aside and that the patent be revoked, and that otherwise oral proceedings be appointed. The opponent did not appeal the opposition division's decision on the apportionment of costs.

T 1273/11 - Reimbursement

 EPO T 1273/11

For the decision, click here [C]

Key points

• During oral proceedings before the Board, the respondent requested an apportionment of costs in relation to the additional costs incurred because of the extremely late cancellation of the oral proceedings before the opposition division.
• The Board cannot decide on the request because it was filed only in appeal, not during the first instance proceedings hence not subject of the appealed decision (following T1059/98).
• A second point is that the claims were amended by adding a feature from the description. The Board does not admit the request, one of the reasons being that this would necessitate a remittal to the opposition division to perform or order an additional search, rather than this would be incumbent on the opponent. 

Reasons for the Decision 

[...]

6.3 Article 13(3) RPBA

The features added to claim 1, relating to the type of motor chosen, come from the description. This leads directly to the question whether such features have been included in the original search, or whether an additional search would be necessary.

6.3.1 Since the description is rather indifferent on the choice of motor (no particular effect is mentioned for any of the choices) it is unlikely that these features were included in the original search (Guidelines B- III, 3,5).

6.3.2 This leads to the question whether it falls upon the appellant/opponent to perform such a search. The respondent argued that the six weeks available to the appellant should suffice. However, the Board questions whether it is actually incumbent on the appellant/opponent, in the present case, to perform such a search. It would be more a question of a remittal to the opposition division to perform or order an additional search (Guidelines, D-VI, 5, see also T 1732/10, point 1.5 and T 447/09, point 2.3 of the reasons).

[...]

7.2 The respondent requested during oral proceedings a different apportionment of costs in relation to the additional costs incurred because of the extremely late cancellation of the oral proceedings before the opposition division. These proceedings were to be held on a Monday, the opponent only notified its absence on the preceding Friday; the oral proceedings were cancelled by fax on that same day.

The Board establishes that this request was not submitted before the opposition division, nor did the opposition division consider and decide upon such matter in the decision under appeal.

The Board concurs with T 1059/98 (reasons point 22) which states:

"Article 21(1) EPC provides that a Board of Appeal can only examine appeals from decisions of the first instance departments of the EPO. This clearly means, in the circumstances of the present case, that the Board cannot examine and decide upon a request for apportionment of costs incurred as a result of oral proceedings before the opposition division, if that request was presented for the first time before the Board of Appeal and thus no decision has been taken on this request by the first instance."

Also this request must therefore be rejected.

T 0967/12 - Number of requests and cost order

T 967/12

For the decision, click here

Key point

• Filing 11 auxiliary requests with the Statement of Grounds, and withdrawing them and replacing them with two different auxiliary requests, is as such not a ground ofr apportionment of costs.

Reasons for the Decision
[...]

7. Requests for apportionment of costs

7.1 Under Article 104(1) and Rule 100(1) EPC each party to the opposition/appeal proceedings bears the costs it has incurred, unless it is decided otherwise for reasons of equity.

7.2 In the case at hand, the opposition division revoked the patent because the three sets of claims discussed at the oral proceedings failed to meet the requirements of the EPC, in particular Articles 56 (main and first auxiliary requests) and 123(2) EPC (second auxiliary request).

7.3 With the grounds of appeal, the patentee submitted eleven sets of claims, with the two first sets of claims corresponding to the main and first auxiliary requests underlying the decision of the opposition division.

7.4 In the respondents' view, the number of requests filed with the grounds of appeal was excessive and amounted to an abuse of procedure. This was contrary to the principle of equity and greatly increased their costs, since each new request had to be reviewed and countered.

7.5 The board considers that the filing with the statement of grounds of appeal of a large number of requests is not, as such, either an abuse of procedure nor inequitable; it is merely an attempt to overcome the reasons given by the opposition division for revoking the patent, and the alternatives proposed in the different requests are fallback positions if the board of appeal followed the reasoning of the impugned decision. The conduct of the appellant in withdrawing the eleven contested requests and replacing them with two different auxiliary requests is also not objectionable. This is to be seen merely as a legitimate defence of its case (see decision T 0162/04, point 5. of the reasons).

The board therefore does not see sufficient justification for departing in this case from the principle that each party meets the costs it has incurred.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The requests for apportionment of costs are refused.

T 0972/13 - Not attending can be costly

Keypoint
If you announce you will not attend oral proceedings in opposition appeal, rather than withdraw the request for oral proceedings, you may be ordered to pay the other parties' costs.

Analysis

• Announcing that you will not attend seems to be almost a standard phrase instead of withdrawing the request for Oral Proceedings (precisely because of the advantage that you can show up if you change your mind). This decision shows that it is not risk free.

T 0972/13 - published 31.03.2015

Dated 28.01.2015 - Board 3.2.05 (Poock, Bridge, Vogel) - DE - for the decision, click here

Sachverhalt und Anträge

I. Die Beschwerdeführerin (Patentinhaberin) hat gegen die Entscheidung der Einspruchsabteilung, mit der das europäische Patent Nr. 1 127 712 widerrufen worden ist, Beschwerde eingelegt.