CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 418/22 – A request for apportionment of costs can be late and not justified in substance

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EP 2 356 730 B1 relates to a “Method for using a mining vehicle, and arrangement in mine, a rock drilling rig and a mining vehicle.

Brief outline of the case

Both proprietor appealed the decision of maintenance according to AR1.

The board eventually revoked the patent for lack of N respectively IS. .

The case is interesting as it deals with apportionment of costs.

The opponent’s point of view

In the OP before the board the opponent requested for the first time that additional costs incurred for the necessary rejoinder to the proprietor’s late-filed letters (100%) and for the opponent’s work in preparation for the OP before the board (75%) be apportioned to the patent proprietor.

The opponent argued that they had to spend a considerable number of hours to respond to the patent proprietor’s late-filed letters.

Moreover, their legal counsel for the pending litigation proceedings had to be consulted such that the pleading was consistent in all proceedings.

The board’s decision

The board considered that in the present case an apportionment of costs is not justified.

Firstly, the opponent’s rejoinders are focused on the question of whether the late-filed submissions of the proprietor constitute an amendment of the proprietor’s appeal case and whether there are exceptional circumstances justifying their being taken into account.

Therefore, the opponent was already aware since their first rejoinder that it considered the additional effort to be caused by the patent proprietor’s late submission.

The board was not aware of any circumstance, and none has been presented, why the opponent should not have been in a position to request apportionment of costs together with their rejoinder.

The board therefore agreed with the proprietor that the request for apportionment of costs is late-filed.

Secondly, also in substance, the board is not convinced by the opponent’s arguments. It is correct that under Art 16(1)(a) RPBA a late-filed amendment of a party’s appeal case may be a justification for an apportionment of costs. However, such an apportionment of costs lies within the discretion of the board.

In the present case, the board noted that both parties consistently brought forward that all relevant aspects regarding D19 and D4 had already been discussed in depth during the various other court proceedings pending between the parties. Under such circumstances, the board did not consider it appropriate to assume that one of the parties was confronted with any extraordinary effort in preparing their case.

Consequently, the board decided to refuse the opponent’s request for apportionment of costs.


On the formal side, the board did not mention Art 13(2) RPBA when refusing the request for apportionment. It is however clear that any request filed during OP might not be taken into account under Art 13(2) RPBA.

The board further noted that the whole discussion turned about the same topic, not only before the EPO, but also before a litigation court. On the substance, there was no reason to consider that the opponent had extra costs.

As the patent was revoked, the litigation also became moot.

T 418/22


Art 104

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