EP 2 628 080 B1 relates to a computer cluster arrangement for processing a computation task and a method of operating thereof.
Brief outline of the case
The OD revoked the patent as the requests were either not compliant with Art 123(2) or not admitted.
The OD also decided apportionment of costs against the proprietor.
An intervention in appeal was admissible, but the requests on file were not compliant with Art 123(2) or 123(3). The revocation was confirmed, but the decision on costs was rescinded.
The decision is interesting as it deals with apportionment of costs.
The opponent’s request for apportionment of costs before the first instance
The opponent requested apportionment of costs and justified its request in view of the large number of requests which imposed a lot of preparation work.
The “unnecessary” high number of requests lead to an unnecessary longer preparation time for the opponent. Also filing some requests late resulted in repeating the process of consulting with the client and taking the client’s instructions on them just for the additional requests which would inevitably have led to additional and avoidable costs.
The opponent argued that its request during the second OP comprised in effect two requests: a first request for an apportionment of costs, and a second request for a calculation of the amount of those costs which had incurred during the OP.
The proprietor’s point of view on the apportionment of costs
The proprietor argued that the decision taken by the OD at the second OP (“first decision“) was, according to the minutes, to accept the request formulated by the opponent during the OP, i.e. an apportionment of those costs “which have been incurred during the OP“.
In the written decision, the OD formulated instead a different, “second decision“: an apportionment of “half of the costs incurred by the opponent when preparing the second OP.
The proprietor requested that both decisions were set aside. The first decision had not been reasoned in the written decision. The second decision concerned a request which had never been submitted nor had it been discussed during the OP.
There was in particular no justification for an apportionment of costs incurred during the second OP.
The OD’s decision
Taking into account also that for the second OP there were 40 out of 70 requests that lead to unnecessary expenses, the OD decided that the proprietor should bear half of the costs incurred by the opponent when preparing the second OP.
The board’s decision on the apportionment of costs
It was not apparent from the minutes of the second OP that the opponent’s request was formulated as two distinct requests. From these minutes, it is to be concluded that the OD has decided to grant an apportionment of costs incurred during the OP in favour of the opponent.
This decision has not been reasoned in the written decision. On the contrary, the written decision explicitly indicated that such costs should not be apportioned in favour of the opponent.
Hence, the decision as notified to the parties in respect of the apportionment of costs deviates substantially from the decision taken at the OP, thereby violating R 111(1+2). In accordance with established case law, see e.g. T 425/97 and T 1698/06, this discrepancy amounts to a first SPV.
The written decision concerning “half of the costs incurred by the opponent when preparing the second OP and the reasons given for it have been conveyed for the first time to the proprietor with the written decision.
The proprietor had thus no opportunity to comment on them, contrary to its right to be heard, Art 113(1). This is a second SPV.
The written decision on the apportionment of costs was thus set aside.
The board also considered that the OD’s decision on the apportionment of costs was also wrong in substance.
The arguments of the opponent and the considerations of the OD only turn on the AR that were filed by the proprietor, but fail to explain why the proprietor’s conduct during the OP would justify that the costs incurred during the OP be borne by the proprietor, as requested by the opponent.
According to the minutes of the second OP, only 5 claim requests were effectively discussed orally, the last two being filed by the proprietor during the OP. The many other AR were summarily not admitted in the proceedings after the discussion of these five requests.
In view of these circumstances, the board failed to see an abuse of procedure in the behaviour of the proprietor during the OP.
The board also considered that neither the high number of AR nor the circumstances of their filing makes equitable an apportionment of costs for the preparation of the oral proceedings in favour of the opponent, cf. Article 104(1).
Comments
Apportionment of costs
The reasons for the OD to decide a different apportionment of costs cannot be followed. Filing AR is a legitimate way to defend the patent and cannot be sanctioned by a different apportionment of costs.
In case of lots of AR, experience shows that very often, claims are kept in various AR. One flaw in a given claim induces a domino effect for all the other ones.
Even filed before the date set under R 116(1), AR have to be fully substantiated. In the absence of substantiation they might not even be admitted in first instance. The proprietor cannot attempt to surprise the opponent and the division by waiting until the OP to come up with the substantiation.
Late filed AR in first instance
In general, late filed AR in first instance, i.e. after the date set under R 116(1), and especially during OP can only be admitted if they fulfil the following conditions, with the proviso that the legal and factual framework of the procedure has not changed:
- do not comprise elements taken from the description
- are prima facie clear (Art 84, in the meaning of G 3/14)
- do prima facie not infringe Art 123(2 and 3)
- are prima facie convergent
- do prima facie overcome the objections raised up to then during the procedure
Needless to say that the conditions of admissibility before the boards are much stricter, cf the RPBA. A proper substantiation before the OD is necessary in case of carry-over requests
The double SPV
There is a pattern to be observed when it comes to SPV with first instance divisions.
As the members of the divisions are not any longer sitting together, and for an OP by ViCo, they can be scattered around the contracting states, the first examiner drafts a decision without the input of the minutes, the minutes’ writer drafts minutes without the input of the decision, and the chairperson signs both decision and minutes without batting an eyelid. The problem is inherent to the system set up by the upper management of the EPO.
Infringement action before the UPC
It will have to be seen whether lots of patents for which an infringement action has been started at the UPC survive a validity check, either in opposition or before the UPC. In the present case, the problem of added matter should have been spotted by the ED. This would have saved later a lot of money for the proprietor
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