EP 3 206 666 B1 relates to liquid pharmaceutical composition comprising pemetrexed.
Brief outline of the case
The opposition was rejected and the opponent appealed.
In-person OP in appeal were scheduled for 08.11.2024.
On 01.11.2024, the opponent withdrew its appeal.
The proprietor requested a different apportionment of costs in its favour.
This request was refused by the board.
The proprietor’s point of view
The proprietor relied on Art 16(1,e) RPBA, i.e. an abuse of procedure.
It argued that the late withdrawal was unjustified since there were no further submissions from the parties after the statement of grounds of appeal and the reply thereto.
Despite this “clear and concise situation“, the opponent did not withdraw its appeal until seven days before the OP. Moreover, the appellant did not inform the respondent’s representative.
The board’s decision
The board of appeal was unable to see anything that points to improper conduct of proceedings or even abuse of procedure, either in the timing of the withdrawal of the appeal or in the conduct of the appeal proceedings by the appellant, which would justify a different allocation of costs.
The proprietor’s reference to a “clear and concise situation” seems to imply that the appeal was hopeless and that the opponent knew this. However, an appeal of limited extent is not necessarily indicative of bad faith.
Rather than supporting an allegation of abuse of procedure, the presentation of an appeal case that is – in the words of the proprietor – “clear and concise” and remains within the framework of the contested decision is in conformity with Art 12(2+3) RPBA.
If the proprietor had considered the appeal to be frivolous or vexatious, there would have been no need for it to reply in detail to the appeal or to prepare for OP.
Rather, the proprietor could have relied on the decision under appeal and requested that the appeal be dismissed. However, from what is on file, it appears that the proprietor took the appeal as a serious threat to its patent and considered its attendance at the OP to be necessary.
The proprietor further seemed to imply that the opponent had deliberately delayed the withdrawal, knowing that the proprietor had to prepare for the OP.
While it is true that the board did not give a clearly positive or negative preliminary opinion regarding the possible success of the appeal, the board’s communication nevertheless addressed the contentious issue of the starting point for the assessment of inventive step, discussed in detail the objective technical problem and gave guidance for the discussion at the OP.
The purpose was precisely to allow the parties to reconsider their arguments. It cannot therefore be said that the board’s communication gave no reason for a withdrawal. Overall, there is nothing in the way the opponent conducted the appeal to suggest that a futile appeal had been filed with the intention of harming the respondent by delaying a final decision.
As regards the timing of the withdrawal, the board additionally noted that R 103(3,a) and (4)(a) provides for a partial reimbursement of the appeal fee in the case of a withdrawal of the appeal within one month of notification of a communication under Article 15(1) RPBA or even during OP.
Rule 103(4,a) would be inoperable in inter partes proceedings if the withdrawal of an appeal at the end of OP automatically made it equitable to award costs against the appellant.
Therefore, the withdrawal of an appeal shortly before the OP or even during such proceedings does not constitute, per se, a reason to impose costs on the party withdrawing its appeal in the absence of additional circumstances that amount to procedural misconduct or even an abuse of procedure.
In the present case, the appeal was withdrawn within the period referred to in R 103(3,a).
While the withdrawal saved time and/or expense not only for the board but also for the proprietor, the board understands that the latter could have avoided further expense if it had known earlier that the opponent had withdrawn its appeal.
However, a lack of courtesy towards the adverse party does not amount to an abuse of procedure. In the absence of additional circumstances, it cannot be concluded that the opponent neglected the level of care towards the proprietor that can be reasonably expected of it.
For the above reasons, the request for apportionment of costs is to be refused.
Comments
The proprietor’s representative did not seem aware of the new version of R 103.
Furthermore, in view of the valid RPBA, any further submissions, after filing of an appeal and the reply to it, are not automatically admitted in the procedure. Pretexting that no further submissions were filed after the initial stage of appeal, can certainly not lead to a different apportionment.
Even if an appeal has little chance of success, this cannot justify a different In apportionment of costs.
Each party may defend its rights or interests by any legally admissible means within the framework of the opposition and opposition appeal proceedings, whereby the right to OP is a legally admissible means, see T 2177/12, Reasons 3.
In T 608/19, Reasons 8, the mere fact that an appellant did not file its statement of grounds of appeal in due time, did not warrant a different apportionment of costs for the respondent.
The introduction of the present R 103 as of 01.04.2000, by giving the possibility of a partial reimbursement of the appeal fee, even if the appeal has been withdrawn during OP, has changed the situation as far as apportionment of costs is to be considered.
By analogy, there should be no reason to decide a different apportionment in first instance, if the opposition is withdrawn by the opponent, or approval of the granted text is withdrawn during OP before the OD. Requesting an OP is a legally admissible means. This is the more so since, OP in opposition being held by ViCo, there are no travelling and accommodation costs.
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