CASELAW-EPO - reviews of EPO Boards of Appeal decisions

Such an appeal is relatively rare, so that it might be worth looking into it.

Two things seem to have gone wrong in the present case. One at the proprietor’s representative, one at the OD.

Brief outline of the procedure

The OD decided to revoke the patent as some claims in the patent as granted or in one of the AR 1-5 were infringing Art 123(2).

The proprietor and all 4 opponents were duly summoned to the OP.

All 4 opponents turned up at the OP.

The proprietor did not turn up at the OP. On the day of the OP, the proprietor confirmed by phone that he had forgotten the OP.

In the absence of the proprietor the OP could have been avoided.

During the OP the opponents requested a different apportionment of costs.

The OD decided a different apportionment of costs to the benefit of the opponents.

The OD considered that the following costs of the opponents should be borne by the proprietor

• Preparation of the OP
• Travel to The Hague
• One hotel night before the OP

The proprietor did not appeal the decision on the merits so that the decision on apportionment became final.

Opponents 2-4 filed documents relating to their costs and the OD decided the amount of costs to be paid by the various opponents.

The proprietor contested the decision of fixation of costs, i.e. the amount of costs allocated, and appealed.

The proprietor argued that

• The costs of participation in the oral proceedings were not to be paid by the proprietor.
• The costs of opponents 3 and 4 were not sufficiently justified.
• The costs for document analysis were not part of the preparation of the OP.
• The costs of opponent 4 are significantly higher than those of opponents 2 and 3 and seem excessive.

The proprietor considered that it is therefore reasonable to only claim a flat fee for one day’s work for the preparation of the oral proceedings.

The opponents argued that

• The appeal was not admissible because the notice of appeal did not mention the proprietor of the revoked patent and did not include the name and address.
• The costs of preparation for the oral proceedings include the costs of participation in the oral proceedings.
• The hours of preparation are not excessive, as the file contained a large number of documents with which it was necessary to re-familiarise oneself, in addition to preparing the whole case.

The parties’ requests

Proprietor

• MR: that it is not obliged to pay the costs of opponents 2 to 4.
• AR1: only the transport and accommodation costs of opponents 2 to 4 are to be borne.
• AR2: only the transport and accommodation costs of opponents 2 to 4 and a lump sum corresponding to one day (7 hours) of preparation are to be borne.
• AR3: only the transport and accommodation costs of opponents 2 to 4 and a lump sum corresponding to one day (7 hours) of preparation shall be borne
• AR4: (formerly AR3) only the transport and accommodation costs of opponents 2 to 4, the costs of participation in the oral proceedings and a flat-rate fee for one day (7 hours) of preparation are to be borne
• AR5: only the sufficiently identified costs of opponents 2 to 4 in respect of transport and accommodation and preparation costs be paid.
• AR6: (formerly AR4) only the sufficiently identified costs of the opponents 2 to 4 for transport and accommodation, preparation and participation in the oral proceedings be borne.

Opponents

• Opponents 1 and 2 did not file any submission
• Opponent 3 requested that the appeal be dismissed, alternatively as a subsidiary request that 7207.10 € be reimbursed
• Opponent 4 that the appeal be dismissed as inadmissible or that the appeal be rejected.

The board’s decision

Admissibility of the appeal

The appeal was considered admissible in spite of the absence of the name of the proprietor and its address. Those elements were known from the opposition file.

The board noted that, although the representative may have had a greater interest in the appeal than the proprietor, there is no non-speculative evidence to support this presumption.

The Board followed the case law according to which a professional representative who has been instructed to act on behalf of a party adversely affected by a decision and who subsequently appeals against that decision must be presumed to be acting on behalf of the same party as the one he or she represented at first instance.

The fixation of costs

The decision of different apportionment of costs cannot be appealed. Only the amount of costs is subject of the appeal as there was no appeal on the merits of the decision. The MR and AR1 were thus not allowable.

Only costs for preparation to be reimbursed

In its decision fixing the amount of costs, the OD did not differentiate between the preparation of the OP and the participation in the OP. This difference is however apparent from the documents provided by the opponents.

This difference between the costs for preparation and participation was present in the communication fixing the amount of costs, but is no longer present, for unknown reasons, in the appealed decision.

The only conclusion that can be drawn from the decision is that the costs of preparing the OP are to be reimbursed whereas the costs of participation to the OP are not.

For the board, the decision does thus only relates to the costs for the preparation but not for the participation.

Speculation that the OD had implicitly intended to include the participation costs and had merely expressed itself incorrectly in its decision cannot justify a decision contrary to the text of the contested decision.

Thus only the costs for preparation are to be taken into account.

Preparation time

The proprietor argued that one day was sufficient to prepare for the oral proceedings.

For the board, it seems that one day’s work is not sufficient to re-familiarise oneself with the file and especially to prepare the file diligently for the OP. For this reason, the Board cannot accept the proprietor’s contention that only a lump-sum for one day (7 hours) of preparation is to be considered, cf. AR 2-4.

Some of the costs of opponent 2 cannot be considered, but the preparation time of 22,5 hours has to be taken into account. The proprietor has to pay 6251,77 € (preparation) + 576 € (travel and accommodation), hence 6 827,77 € are due to opponent 2.  

The study of the data submitted by opponent 3 show that 20,55 hours are due for the preparation = 6 781,50 €, but not 1,75 hour for the participation. With the travel and accommodation costs of 425,60 €, 7 207,10 € are due to opponent 3. 

Opponent 4 claimed 9306 € for the preparation (30 hours) and 594 € for the participation. As the participation cannot be considered, the 594 € are not due.

The amount of hours is higher than that of opponents 2 and 3. As the Board has no concrete indications to doubt the accuracy of the figures provided by opponent 4, the figure is accepted. With the travel costs of 1 299,27 €, an amount of 10 605,27 € is due to opponent 4.

Comments

Proprietor

Having to pay nearly 25 000 € for having forgotten an OP is not cheap, however justified in the present case. That the date of the OP has been changed and that a reorganisation in the representative’s firm took place and led to a confusion are both irrelevant. The representative actually acknowledged that he had forgotten the OP.

For the board, the representative may have had a greater interest in the appeal than the proprietor! Needless to say more!

That the notice of appeal did not mention the name and the address of the proprietor was not fatal to the proprietor, but is an easily avoidable mistake. The presumption of mandate for appealing for a representative having acted in appeal saved the admissibility.  

Opposition Division

According to the guidelines D-IX, 1.3 (ii) the costs comprise the remuneration of the representatives of the parties in respect of OP.

According to D-IX, 1.3 (iv) the costs comprise the travel expenses in coming to OP.

The remuneration of the representatives of the parties in respect of oral proceedings includes the actual participation to the OP.

It is certainly part of the expenses necessary to assure proper protection of the rights involved.

Whilst a representative is taking part to an OP which turns out not to have been necessary, he cannot deal with other files.

The decision of the OD fixing the cost is not mentioning the participation to the OP. This is rather surprising.

The limitation of the costs by the OD to the costs for preparation and, at large, the costs for travelling to the place of OP does not appear to be correct. It is not in the spirit of the Guidelines and there is case law to the contrary.

In general

Requesting that only a lump sum is to be paid by the negligent party for the preparation of an OP seems not generally appropriate. Preparation does not mean simply looking at the last entry of the negligent party.

In order to be correctly prepared, the whole file is to be reviewed, be it in opposition or in appeal.

In T 0930/92, the board held that the costs of remuneration of the respondent’s professional representative in preparing for and attending the OP were to be taken into account.

The board also held that in addition to the remuneration of the professional representative of that party, the expenses incurred by an employee of that party in order to instruct the professional representative before and during OP may be taken into consideration, if such instruction was “necessary to assure proper protection of the rights”.

Not turning up at an OP can thus have dear consequences.

https://www.epo.org/law-practice/case-law-appeals/recent/t202024fu1.html