EP 2 047 577 B1 relates to a method and system of real time management and modulation of electricity consumption.
Brief outline of the procedure
In T 8/16, following the revocation by the OD, the board decided that the OD had committed a SPV, by not adding to its decision an AR duly filed by the proprietor, but not admitted by the OD, and remitted the case for further prosecution.
In the reopened procedure, the patent was again revoked by the OD.
The proprietor appealed this second decision, but later withdrew its appeal.
The opponent requested a different apportionment of costs for both the opposition and the appeal procedure.
The OD denied its competence to rule on the request for apportionment of costs on the basis of the circumstances of the first appeal proceedings.
The whole discussion turned about said AR which could not any longer be found and submitted by the proprietor.
The opponent’s point of view
By maintaining AR ‘RS_1_2’ in the appeal and declaring that it was lost, the proprietor did not act in good faith; by losing this request, it was, at the very least, negligent.
This negligent behaviour contributed to the delay in the proceedings due to the referral of the case back to the OD.
The proprietor’s point of view
The request for apportionment of costs relating to both proceedings is inadmissible since the proprietor has withdrawn its appeal and the decision of the OD has thus become final. The board therefore no longer has jurisdiction to rule on the request for apportionment of costs.
The request for apportionment of costs relating to the opposition proceedings is also inadmissible under R 97(1).
Since the board did not order a different apportionment of costs in its first decision T 8/16, the principle of res judicata and the ratio decidendi of that decision precludes a new decision by the board on the request for apportionment of costs.
The request for apportionment of the costs of the present appeal proceedings is also unfounded. The proprietor did not abuse the proceedings in the first appeal proceedings.
The AR recorded on a computer could not be found because six years had elapsed between the statement setting out the grounds for the appeal and the first notification from the board, the coronavirus pandemic had occurred in the meantime, the file contained more than 1,000 pages and the proprietor’s representative who had been in charge of the file had since retired.
The board’s decision
The board can decide on apportionment even if the appeal is withdraw
The withdrawal of the appeal lodged by the sole appellant, i.e. the proprietor, closes the appeal proceedings with regard to the substantive issues that were the subject of the contested decision at first instance, but not in respect of requests whose subject matter was not settled by the withdrawal of the appeal, such as the present request by the opponent for apportionment of costs.
Apportionment of costs for the opposition procedure
The board reminded that according to R 97(1), the apportionment of costs of opposition proceedings cannot be the sole subject of an appeal.
The board shared the opponent’s view that R 97(1) was not directly applicable in the present case, as the opponent had not filed an appeal.
For the board, the opponent’s request for a different apportionment of the costs of the opposition proceedings must be rejected as inadmissible.
Apportionment of costs for the present appeal procedure
According to the established case law of the boards, a request for apportionment of costs would have been inadmissible in proceedings T 8/16, as it would have concerned the apportionment of future costs.
The misconduct of a party in one of the phases of the proceedings may have negative consequences on the costs of the subsequent phases.
In the present case, the OD wrongly denied its competence to rule on the request for apportionment of costs on the basis of the circumstances of the first appeal proceedings.
In the present case, during the first appeal proceedings, the proprietor based its request for remittal to the OD on a set of claims that it had not submitted in its statement setting out the grounds of appeal.
As this set of claims was not included in the electronic file due to an omission on the part of the OD, the board invited the proprietor to submit it in accordance with Art 12(3,b) RPBA a copy of the request. The proprietor did not comply with this request, as it was unable to locate this set of claims in its files.
The proprietor, by maintaining in its appeal a request based on a set of claims that it was unable to produce, did not act with due diligence. The loss of the set of claims during the appeal proceedings, regardless of the circumstances within the proprietor’s sphere that caused it, constitutes negligence on the part of the proprietor: it affects the essential obligation to ensure the completeness of the elements on which a party relies.
This obligation stems from the principle of procedural diligence and cannot be transferred to the OD. The submission of this set of claims was therefore the sole responsibility of the proprietor.
It is true that the OD also committed an error which contributed to the remittal of the case. However, in exercising its discretion, the board considered that the proprietor is primarily responsible for the additional costs incurred by the opponent.
The board held it is possible that the opponent was in possession of the lost AR as a copy must have been given to her during the OP in the first opposition proceedings. However, it is not, in principle, for one party to fulfil the obligations incumbent on an opposing party, or even to contribute to the possible success of a request made by that party. The latter cannot be required, even under the principle of good faith.
The board therefore decided a different apportionment of costs for the second appeal procedure.
Comments
Withdrawal of an appeal only mean that there will be no discussion on the merits, but ancillary decisions, like apportionment of costs are still possible.
Normally a different apportionment is decided if a party requesting OP does not turn up or does not connect without any warning, or if the opposition is withdrawn or the proprietor withdraws approval shortly before the OP, but not when a party cannot find a request.
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