EP 3 071 722 B1 relates to an integrated sintering process for microcracking and erosion resistance of thermal barriers.
Brief outline of the case
The opposition was rejected and the opponent appealed.
Before the OD, the opponent had requested a different apportionment of costs which was refused by the OD
The opponent appealed the OD’s decision not to allow a different apportionment and requested a different apportionment of costs in appeal.
Both requests were refused by the board.
Eventually the patent was maintained according to AR 15ter.
The opponent’s reason for filing a request for a different apportionment
The proprietor filed 13 new AR during the opposition proceedings, ten days before OP, without clearly and fully indicating the basis for the amendments, which required a particular effort of preparation, including a comparison with the state of the art. This justified setting aside the OD’s decision as regards apportionment of costs.
In addition, the filing of a large number of AR which were not substantiated in the reply to the statement of grounds of appeal and without a full explanation of the amendments, for example by means of marked copies, also justified an apportionment of costs in accordance with Art 16 RPBA.
The board’s decision on apportionment
The board first noted that following receipt of its communication under Art 15(1) RPBA, the opponent did not provide any new arguments on this point. The board therefore confirmed the considerations set out in that communication.
The late filing by the proprietor of 13 AR during opposition could not convince the board to decide a different apportionment.
It is a principle of opposition proceedings that each party bears the costs it has incurred, cf. Art 104(1).
Non-compliance with the time limit set by R 116(1) is not uncommon, and it cannot be ruled out that the proprietor had a reason to act in this way.
On the other hand, a party that does not comply with procedural deadlines runs the risk that its late submissions will be considered inadmissible by the OD, as iit was the case here.
For the board, it takes more than a simple failure to meet a deadline to prove that a party has acted in bad faith or so negligently as to justify an apportionment of costs.
The reference to Art 16RPBA with respect to the requests filed in reply to the opponent’s appeal was neither convincing.
In the present instance, the application of Art 16 RPBA, was not justified. The proprietor has indicated the amendments to AR 1 to 48 in Tables 1 and 2 filed with its response to the Statement of grounds of appeal.
Although it would have been preferable also to attach marked copies of the applications, the proprietor explained the basis for the amendment in the application as filed, as required by Art 12(4)RPB.
The board noted that the proprietor did not substantiate AR 2 to 48 with regard to objections under Art 100(a) and 100(b) when they were filed. The board considered that this fact – which obviously penalised the admissibility of the AR – did not have such a great impact in the preparation of the case because they were filed as soon as possible in the appeal proceedings.
In any event, a comparison between the subject matter of the AR and the objections raised had to be made by the opponent, who would not have resigned to simply accept the proprietor’s arguments regarding the admissibility or merits of the AR.
In view of the foregoing, the board rejected the request for a different apportionment of costs.
Comments
A different apportionment was not justified, whether for the OP before the OD, nor for the OP before the board.
The present decision confirmed that, in normal circumstances, filing requests without a proper substantiation, after the date set under R 116(1) by the OD, leads to their non-admissibility.
Could such a late request nevertheless be admitted, the OD should in principle postpone the OP, or leave the discussion of the late filed requests to a subsequent OP in order to give to the opponent time to react and to respect its right to be heard. As the proprietor would have caused the subsequent OP, then a different apportionment of costs would have been justified.
It should be kept in mind that late filed grounds/evidence/lines of argumentation/requests might however become de facto admissible when for instance the other party submitted observations in substance and in writing before the actual OP. See for instance T 401/13, T 323/10 or T 68/02.
In the present case, the opponent should simply have observed that the AR were late filed an therefore prima facie not admissible. It can however not dispense himself from looking and analysing, even roughly, at the late filed requests.
Even if the requests filed in reply to the statement of grounds of appeal were not substantiated, this would not dispense the opponent from looking and analysing, even roughly, at the late filed requests.
In view of the RPBA, the late filed, and unsubstantiated AR will most probably not be admitted under Art 12(3+5) and 12(4+6) RPBA,. They will neither be subject to a subsequent OP before the board or to a remittal to the OD.
It should also not be forgotten, that filing lots of AR in first instance is a direct consequence of Art 12(2) and 12(4) RPBA.
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