CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1346/21 -  Late filing of requests does not justify a different apportionment of costs

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Patent EP 3 194 674 B1 relates to a plastic infiltration unit, and a system comprising a plurality of plastic infiltration units. Plastic infiltration units are used for the temporary storage of excess rainwater, enabling controlled discharge.

Brief outline of the case

The patent proprietor and the opponent appealed against maintenance according to AR2 by the OD.

The proprietor filed 11 AR in the course of the appeal. AR4ap corresponded to AR2op.

Claim 1 as maintained was infringing Art 123(2) Eventually the board revoked the patent for lack of N or IS or added-matter of some requests and did not admit other under Art 13(2) RPBA.

The opponent´s requests for a different apportionment

The opponent requested a different apportionment of costs in its favour due to the t proprietor’s alleged abusive behaviour in regard to the submission of five new AR four days before the OP.

The board’s decision

For abusive behaviour to be acknowledged, the proprietor would have had to have filed these claim requests not in pursuit of a legitimate aim, such as that the patent be maintained on the basis of one of these requests, but rather primarily to cause damage to the opponent.

The burden of proof for an abuse of rights is on the person claiming it and such an abuse must be established without doubt, see J 14/19, Reasons 13.1.

Persistently pursuing own interests in proceedings before the EPO does not as such amount to an abuse of procedure, cf. T 2892/19, Reasons 5.

Moreover, preparations for discussing the admittance and substance of late-filed submissions are part of the normal work that can be expected of any party and its representative, see T 1848/12, Reasons 2.1.

In the case at hand, the opponent did not provide any proof as to the patent proprietor’s possible intention to cause harm, nor is the Board aware of any such indication.

The mere fact that the claim requests concerned were not admitted or allowed by the Board, or were possibly unlikely to be admitted or allowed, does not constitute any such indication.

The Board also pointed out that it admitted auxiliary request 7-1, i.e. one of the AR concerned, into the appeal proceedings, as it considered its filing a legitimate reaction to the board’s observations in its preliminary opinion.

The board therefore sees no reasons of equity which could justify diverging from the principle of Art 104(1) whereby each party should bear the costs it has incurred.


 A proprietor is free to file as much AR as he wishes in an attempt to avoid revocation.

If those requests are late filed, the question of their admissibility, especially in appeal under the valid RPBA will inevitably come up.

It might be unpleasant for the opponent, but he will have to deal with them, at least on admissibility. This might be burdensome but does not represent a dommageble action by the proprietor.

I know of a case in which a proprietor requested a different apportionment of costs as he had to translate in a hurry late filed documents from German to English. It is clear what the answer of the OD was.


Art 104

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