The patent relates to methods of characterizing peptides, peptide mixtures, and polypeptide mixtures
Brief outline of the procedure
The OD decided to reject the opposition.
Both opponents appealed this decision.
In a communication pursuant to Art 15(1) RPBA20 the board made clear that claim 1 as granted was infringing Art 123(2). All features in claim 1 were found as such in the application as filed, but not in the combination claimed, especially in view of the dependency of the claims as filed.
After receiving the communication pursuant to Art 15(1) RPBA20, the proprietor stated that it no longer approved the text in which the patent had been granted and would not submit an amended text. It also withdrew all AR filed during appeal proceedings.
The patent was thus revoked.
The case is interesting as Opponent 2 requested a partial reimbursement of the appeal fee under R 103(3,a), i.e. 50%, as well as the reimbursement of costs for the preparation of the OP.
The request for reimbursement of 50% of the appeal fee was rejected and only the reimbursement of 25% of the appeal fee was ordered.
The request for a different apportionment of costs of opponent 2 was refused.
Opponent’s 2 position
The opponent was informed three days before the scheduled OP by the proprietor that the latter abandoned the patent. The OP were thus not any longer necessary.
The abandonment of the patent came 16 days after the communication of the board pursuant to Art 15(1) RPBA20.
For the opponent, the opinion of the board on added matter was short, clear and readily understandable.
The opponent argued that, if the proprietor had handled swiftly, all the preparatory work for the OP would have been avoided, hence the request for a different apportionment of costs.
The opponent requested a reimbursement of 6 375€, the bulk of which being 5 100€ for two days of preparation of the OP.
The board’s position
The board noted that the request for apportionment of costs had been received on the same day the decision on the case had been sent to the postal services of the EPO, cf. G 12/91.
The board questioned whether it had the power to decide on this request since it was received on the day of completion of the internal decision-making process for the decision to revoke the patent in the absence of an agreed text by the respondent.
The board furthermore opined that no special circumstances existed that would make it equitable to depart from the general principle set out in Art 104(1) that each party to opposition proceedings must bear its own costs. The board invited the parties to comment on the board’s preliminary view within a time limit of two months from notification of the board’s communication.
Having received the comments, the board hesitated between two possibilities about the request on apportionment of costs.
- As the request was submitted once the completion of the decision-making process within the meaning of decision G 12/91, the request was too late.
- Although a withdrawal of an appeal terminates the proceedings on the merits at once, but the board still has the power to decide on ancillary questions such as the reimbursement of the appeal fee. The board quoted some case law illustrating this possibility.
For the board, the circumstances of the case, did not correspond to any situation justifying a different apportionment of costs. The board did not see anything in the timing of the proprietor’s letter which amounts to improper conduct of the proceedings or even to an abuse of proceedings justifying a different apportionment of costs.
Under the principle of party disposition expressed in Article 113(2) EPC, it is in the hands of a party to determine the subject-matter on which the EPO should decide.
Based on this principle, an appellant is entitled to withdraw its appeal and an applicant or patent proprietor is entitled to withdraw its approval of the text of a patent at any time during pending appeal proceedings.
Except for where the exercise of the rights conferred by this principle contravene a party’s obligation to act in good faith (as exemplified in Article 16(1) RPBA20), this principle may not be restricted by the threat of an apportionment of costs.
The board noted further that reimbursement of 25% of the appeal fee is provided for even for the withdrawal of an appeal during OP before the decision is announced.
For the board the legislator considered that the benefits the board and respondents to the appeal derive from the withdrawal of an appeal offset the costs that they incur, even if they are avoidable.
In the board’s opinion, the same holds true for a patent proprietor’s withdrawal of its approval pursuant to Art 113(2), even more so if the parties are informed of it before the OP.
The board understands that opponent 2 could have avoided costs had it known earlier that the proprietor no longer wanted to pursue its requests for the rejection of the oppositions and, in the alternative, for the maintenance of the patent in amended form.
However, even in light of the board’s preliminary opinion, opponent 2 had no legitimate expectation that the proprietor would surrender its patent.
Indeed, opponent 2 appears to have still considered its attendance at the OP to be necessary to defend its case. Otherwise, it could have relied on its written case and announced that it did not intend to attend OP.
The possibility of reimbursement of the appeal fee by withdrawal of the appeal during OP before the final decision is announced has apparently changed the situation in matters of apportionment of costs.
Withdrawing by the proprietor of the approval of the text during OP is a legitimate means of dealing with the appeal. The board equated withdrawing the approval of the text with withdrawing of an appeal
In those circumstances, the withdrawal of the appeal and/or the withdrawal of the approval or of any request filed in appeal cannot lead to a different apportionment of costs.
This even the more so here, since the withdrawal of the approval occurred before the actual OP.
Time line of the procedure
However, it is also worth looking at the time line of the procedure.
18.01.2022, summons for in-person OP on 01.12.2022.
09.11.2022, communication pursuant to Art 15(1) RPBA20 in which the board considered, albeit in a provisional manner, that claim 1 as granted massively infringed Art 123(2) and that all AR suffered the same drawback.
By sending a communication dealing with substantial matters less than a month before the OP, it could be possible to consider that the board has also contributed to the situation. It left actually little time to the proprietor and the opponents to react.
The opponent’s justification for a different apportionment
In view of the massive objections under Art 123(2), and under R 80 for some requests, it is difficult to follow opponent 2 when he claims that he had to go through further objections of lack of IS or lack of sufficiency to be best prepared.
The opponent even claimed that it could expect the filing of further requests. In view of the fact that the problems under Art 123(2) had been present since the beginning of the opposition procedure, Art 13(2) RPBA20 would have put a stop to any desire to file further AR.