EP 2 178 814 B1 relates to a method for producing fluorinated olefins.
Brief outline of the case
The patent was revoked by the OD and the proprietor appealed.
OP were rescheduled by the board to 10.10.2024, but maintained as in-person OP.
In a communication under Art 15(1) RPBA the board indicated that the appeal was likely to be dismissed.
On 01.10.2024, the proprietor withdrew its appeal and the appeal procedure was closed on 10.10.2024.
Opponent 3 submitted on 12.11.2024 a request for apportionment of costs under Art 104(1) and Art 16(1,c) RPBA.
The board refused the request for apportionment of costs filed by opponent 3.
The opponent’s point of view
Opponent 3 requested the board to order the proprietor to pay all, or at last a part of the costs it incurred in the preparation for the oral proceedings.
The partial costs should correspond to the cancellation fees for the travel arrangements for the named four technical experts announced by opponent 3. The costs were set out in detail and invoices were submitted as documentary evidence that these costs indeed arose.
Opponent 3 argued that costs could have been avoided if the proprietor had warned the opponents in good time about its intention to withdraw the appeal. Its failure to do so amounted to an omission under Article 16(1,c) RPBA. The technical experts also had to cancel their trip to a trade fair in Nürnberg.
The proprietor’s point of view
The proprietor requested to reject the request for apportionment of costs, both as inadmissible and unfounded. It argued that the request was out of time, given the closure of the appeal proceedings.
The withdrawal of an appeal was always a legitimate exercise of rights.
The technical experts were not prevented from attending the fair trade, and it was opponent 3 who insisted on the in-person hearing, instead of the hearing by videoconference as proposed by the proprietor.
The board’s decision
Admissibility of the request for apportionment
A request for apportionment of costs is not inadmissible for the sole reason that it had been filed after the closure of the appeal proceedings.
The board held 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.
The board noted that there are two events that lend themselves as the identifiable end point of the proceedings, the withdrawal itself or the later formal closure of the appeal proceedings by a board.
For the board, there was no need to categorically exclude a request for apportionment following any of these two possible end points of the proceedings.
The Board considered that the wording of Art 16 RPBA, Art 104(1) or R 88(1) does not support the proposition that requesting cost apportionment after the closure of the proceedings should be normally excluded as a question of principle, contrary to the findings of T 1556/14, Reasons 2.
R 88(1) should only be seen as a general rule that permits exceptions, and it need not imply any firm legislative intent that in those cases where there is no final decision on the merits at all, as in the case of the withdrawal of the appeal (or of an opposition for that matter), the possibility of a request for apportionment of costs would also end together with the termination of the substantive proceedings.
At least since decision R 3/22 by the EBA 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. The board quoted a number of decisions to this effect.
The board observed that case law does not seem to give a consistent and definite answer, but also does not seem to fundamentally contradict the present board’s conclusion.
A request for apportionment is open to ancillary proceedings
A request for apportionment of costs after termination of the appeal proceedings can still open ancillary proceedings for deciding issues arising out of the original appeal proceedings, without re-opening the substantive appeal proceedings.
The fact that the substantive appeal proceedings will not be reopened is completely unproblematic for the question of apportionment of costs, the outcome of which is in no way linked to the substantive outcome of the appeal proceedings. The apportionment of costs may be ordered against any party, irrespective of its party position or the success of its case on the merits.
The continuation of the proceedings in the form of ancillary proceedings does not alter the substantive patent rights, so that public interest is not affected as the cost apportionment only concerns the parties.
Time limit to file a request for apportionment of costs
A reasonable time limit for filing a request for apportionment of costs where the appeal proceedings are terminated by a withdrawal of an appeal should correspond to the usual time limits applicable to proceedings before the EPO, namely the standard two months of R 132(1).
The board observed that apportionment of costs is regularly requested also in the comparable situation where a patent proprietor withdraws its agreement to any claims in the proceedings. This also leads to the formal and fast closure of the proceedings, albeit there with a formal decision of the board
Questions should however be asked only if the request is submitted after a reasonable period of time.
Obligation to inform the other parties
Beyond the general obligation to inform the other parties as soon as possible, the parties have no formal obligation to take even more active steps merely to avoid the costs already foreseen by the other parties.
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 Art 104(1).
The exercise of procedural rights, in particular the right to withdraw the appeal, in itself does not establish culpable behaviour of a party, unless there is evidence of intentional causing of harm to the other party.
For the board, the legislative intent behind R 103(4,a), would be negated by potential requests for cost apportionments based on the mere fact that the appeal is withdrawn late.
Should the proprietor be indeed under an obligation to give notice of withdrawal earlier, a number of questions would immediately arise especially about the timing and the duties towards other parties.
The recognition of such a formal obligation would place an unrealistic burden on parties to the proceedings before the EPO. At most, parties must seek to avoid additional costs.
Comments
The present decision makes clear that a request for a different apportionment of costs can be filed after the closure of proceedings, but within two months of the end of the proceedings.
Withdrawing an appeal, or an opposition, is a normal exercise of procedural rights and cannot be subject to the fear of having to bear costs of another party.
Every party is free to send technical experts to an OP, but this does not entail that in case of withdrawal of the appeal by the appellant, or the opposition by the opponent, the withdrawing party has to bear costs related to technical experts. Such technical experts are at best accompanying persons and as such, do not have a procedural right to be heard by the deciding body, cf. G 4/95.
The present decision indeed applies mutatis mutandis in opposition proceedings.
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