CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 561/19 – Decision on apportionment of costs, especially in case of late-filing of experimental data

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The patent relates to low temperature production of 2-chloro3,3,3-trifluoropropene,  also known as HCFO-1233xf, or 1233xf.

Claim 1-6 as granted relate to a method of production of 1233xf and claims 7-9 as granted relate to an integrated system for the production of 1233xf.

Brief outline of the case

Due to the late-filing of experimental data during the first OP by the opponent, said OP was adjourned at the request of the proprietor and a second OP was held.

At the second OP, the OD decided maintenance in amended form according to the MR on file.

Claim 1 of the MR was identical to claim 1 as granted and only claim 5 as granted had been deleted. The other claims were renumbered.

The OD decided on a different apportionment of costs for the second OP in favour of the proprietor.

The opponent appealed not only the decision on the substance but also on the apportionment of costs.

The board decided maintenance according the MR in opposition and confirmed the decision of the OD on costs.

The opponent’s point of view

The opponent was of the opinion that a different apportionment of costs can only be granted following negligence, will to harm or abuse of procedure. As none of these conditions was met, the OD’s decision in this respect should be reversed.

The opponent argued that a different apportionment of costs could not be granted merely because a further OP was needed.

The opponent relied on T 1771/08, T 1016/93, T 336/86 and T 28/91 to show that the mere postponement of oral proceedings was not a sufficient condition for granting a different apportionment of costs.

The proprietor’s point of view

The proprietor argued that negligence, will to harm or abuse of procedure was not a prerequisite for a different apportionment of costs.

In the case at issue, the opponent’s filing of three documents and especially experimental data, and the admission of those documents into the proceedings necessitated a second OP. An apportionment of the costs linked to the second OP in favour of the proprietor was thus correct.

The board’s decision

The board noted that the opponent did not challenge the need for adjournment, either before the OD or on appeal.

The OD saw no negligence or will to harm in the opponent’s behaviour. The proprietor did not raise any objection in that respect either.

Negligence, will to harm or abuse of procedure is not a prerequisite for a different apportionment of costs. It suffices that there is no good justification for the late filing and that the late filing is the cause of both the adjournment of the OP and extra costs for the other party.

If a party chooses to file evidence so extremely late, the risk is that said evidence will not be admitted into the proceedings or that, if the evidence is admitted, the party has to bear costs incurred as a result by the other party.

It was not disputed that the OP were adjourned solely due to the filing and admission of three documents during the first OP.

The opponent provided no good reason for filing this evidence at that point in time.

The opponent argued before the board that experimental evidence, D15, merely supported an objection of lack of sufficient disclosure based on example 6 of document D7, which had been on file from the outset of the opposition proceedings. In view of the OD’s negative preliminary view, D15 was intended to reproduce example 6 of document D7.

Experimental evidence D15 had been concluded the day before the OP and filed as soon as available.

For the board, there was no apparent reason why a relatively simple experiment could not have been carried out until two years after the grant of the patent.

At the OP, the opponent argued that D15 was a response to the OD’s preliminary opinion that example 6 of D7 did not demonstrate the insufficiency of disclosure of the patent.

The OD’s preliminary view, annexed to the summons, was issued almost eight full months before the OP. There was thus ample time to carry out experiments, if needed.

The board noted in addition that, neither the OD’s communication nor the notice of opposition contains any reference to example 6 of D7. The opponent’s argument thus contradicted the available evidence.

At the OP before the board, the opponent argued that the filing of experimental evidence D15 had been announced in advance. The opponent had not cited any passage of the written procedure which could show that to be the case, nor can the board find any.

For the board, there was thus no good reason for not having filed D15 earlier. The admission of D15 was the reason why the OP were adjourned. The additional costs caused by the adjournment should thus be borne by the party causing the adjourment, so the OD’s decision in this respect was correct. As the filing of D15 alone justified a different apportionment of costs, it was not necessary to examine whether the filing of D13 and D14 also had a bearing in this respect.

The board agreed with the opponent that a mere postponement is not a sufficient condition for granting a different apportionment of costs, as shown by the case law cited.

However, none of the decisions quoted by the opponent relates to a situation comparable with the one in hand.

In T 1771/08, the postponement of the OP was not caused by a party’s behaviour.

In T 1016/93, document D4 was filed four weeks prior to the OP before the board, but no postponement was involved and a different apportionment of costs was not requested.

T 336/86 involved the filing of a very relevant document at the OP before the board. The proprietor contended later that OP would not have been necessary and hence requested a different apportionment of costs. However, no further OP was needed.

T 28/91 concerns an appeal following rejection of the opposition and non-admittance of late-filed evidence; it concluded with dismissal of the appeal. The proprietor argued that the OP before the board had been redundant and requested a different apportionment of costs, which was refused.


As the board noted, late-filing of evidence always bears the risk that said evidence will not be admitted into the proceedings or that, if the evidence is admitted, the party has to bear costs incurred as a result by the other party.

This is especially the case when experimental data is late filed.

This is also the case when it is not possible to correctly assess the content of a late-filed piece of prior art during the OP. In this case, it has in any case to be prima facie relevant in the eyes of the OD. Any lengthy discussion on the relevance shows in general that it is not so relevant as alleged by the party wanting to introduce it.

Experimental data, from the opponent or the proprietor, even filed within the time limit under R 116(1), will in general not be admitted to the proceedings, see T 2051/09, or T 1130/13. In such a situation, the other party will not have time to check the data or to carry out its own experiments. Admitting late-filed experimental data means in general that a new OP has to be scheduled.

OD’s are understandably rather reluctant to lengthen the procedure.

The board’s would most probably not admit late-filed experimental data in appeal under any level of the convergent approach according to the RPBA20.

It can however happen that later a board decides that the OD’s discretion was not correctly exercised, but this is not relevant here. It can sometimes happen, but not as a rule.

In the presence of late-filed experimental data admitted by the OD it is important for the proprietor or the opponent to request postponement/adjournment of the OP

  • either in order to submit its own experimental data, and that more time is needed for that purpose
  • or for a proper analysis of the late filed experimental data.

In T 2197/11, and in the absence of a reaction of the proprietor during the OP, the board concluded that the OD exercised its discretion to admit the document correctly and in a reasonable way. As the experimental data was admitted during the opposition procedure, it could not be disregarded in appeal.

A similar conclusion was reached by the board in T 1605/16 or T 1514/15 (about a demonstration during OP). In the two latter cases the board even concluded that the OD had not committed a substantial procedural violation and the right to be heard of the other party was respected.

In the same vein as T 336/86 or T 28/91, in T 900/09 new evidence was admitted in appeal which led to the revocation of the patent for lack of N. This late-filed evidence was a technical brochure of the company National Starch, belonging to the opponent, and accessible to the public via the Internet. The board considered that, had the document been filed in due time before the OD, an appeal would have been avoidable as the document was even N destroying for the patent as granted. In view of the circumstances, the board decided on its own volition that the appellant/opponent had to bear the proprietor’s costs for the whole appeal procedure.

Coming back to the present case, it is ironical that the opponent did not manage to obtain a limitation or a revocation with the help of the late-filed experimental data, but he was faced with a different apportionment of costs.

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