EP 3 545 259 B1 relates to Methods and apparatus for examining rotationally symmetric test objects, actually a test system for section-by-section interferometric testing of tyres.
Brief outline of the case
Filing date 08.02.2019
Priority date 18.02.2018 DE 102018001255
Presentation by the applicant/proprietor, Bernward Mähner, “Tire Contour Detector (TCD) For a self-adjusting shearographic tire tester”, at the Tire Technology Expo on 16.02.2016 (BM1)
The OD decided that claim 1 as granted lacked N over the presentation BM1.
The OD maintained the patent according to AR6.
Proprietor and opponent appealed.
In a letter dated 14.10.2025, the proprietor withdrew his appeal and his request for OP. At the same time, he declared that the patent had expired in all contracting states in which it would have last been effective (DE, FR, AT, IT) by means of declarations of renunciation.
In a letter dated 10.11.2025, the opponent requested that the appeal proceedings be continued.
Contrary to the OD’s decision, the patent as maintained lacked N over BM1.
Further AR were not admitted under Art 12(3+5) RPBA for lack of substantiation.
The patent was thus revoked by the board.
Proprietor and opponent also requested a different apportionment of costs in their respective favour.
In this blog entry we will only deal with the apportionment of costs.
Apportionment of costs-The proprietor’s position
Should the opponent request continuation of the appeal proceedings pursuant to R 84(1), the proprietor requested that the opponent be ordered to pay the costs of the further proceedings.
Apportionment of costs-The opponent’s position
The opponent requested that the proprietor be ordered to pay the costs of the opposition proceedings. This request was justified on the grounds that the proprietor had maliciously or at least recklessly concealed from the ED the presentation BM1, which in the opinion of the opponent and the OD was detrimental to N. This conduct was said to have caused the costs of the opposition proceedings, since the patent would never have been granted had this prior art been known.
The board’s decision on apportionment
For the proprietor
The request for a different apportionment of costs is unfounded in view of Art 104(1). A different apportionment of cost is limited to adversarial proceedings such as opposition proceedings.
An alleged abuse that occurred during the examination proceedings, i.e., before and not during the opposition proceedings, does not fall under Art 104(1). In this respect, the board fully concured with the reasoning of the board in decision T 66/18, Reasons 4.2 to 4.8, which concerned a comparable case.
Irrespective of this, the opponent’s assumption that the ED would “never” have granted the patent if it had been aware of document BM1 is based on mere speculation.
It cannot be ruled out, nor is it entirely implausible, that the ED would have agreed with the proprietor’s arguments regarding the disclosure content and relevance of document BM1.
It therefore seems entirely possible that the ED would have granted the patent even if it had been aware of document BM1. In this respect, there would in any case be a lack of the necessary causality between the alleged malicious or reckless conduct of the patent proprietor and the costs incurred by the opponent as a result of filing the opposition.
This case law of the boards also shows that the costs of one party that are considered apportionable must have been directly caused by the contested conduct of the other party in opposition.
It can also be inferred from the case law that only those costs that exceed the costs normally expected during opposition proceedings can be expected to be paid by the other party. In other words, the possibility of apportioning costs does not appear to be perceived as a sanction, but rather as an opportunity to grant at least partial compensation for actions in the opposition proceedings that are not in line with the required diligence.
For the opponent
There is general interest in a decision on the merits, rather than a mere discontinuation of the appeal. This gives legal certainty, even if the patent might have lapsed in the countries it was valid until its lapse.
Therefore, there are no equitable grounds within the meaning of Article 104(1) EPC in conjunction with Art 16(1) RPBA that would justify imposing costs to the detriment of the opponent..
Comments
The board is right when it limits the possibility of ordering a different apportionment to inter partes procedures, and is actually limited to cases in which the necessary diligence of the parties has not been respected.
An opponent is perfectly entitled to request continuation of the proceedings under R 84(1). Exercising a legal right cannot be a cause for the compensation of costs in favour of the opposing party.
On the other hand, in T 900/09, Reasons 15-16, the opponent had to bear the proprietor’s costs for the appeal procedure. The board considered that, had the opponent filed the highly relevant document in opposition, the appeal would not have been necessary. This was certainly not the case in the present situation. T 900/09 is a one-off decision.
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