EP 2 879 636 B1 relates to a wound dressing.
Brief outline of the case
The patent was maintained according to AR 13.
The OD decided a different apportionment of costs against the proprietor.
The proprietor and two opponents appealed the decision.
The board decided that then valid MR=AR12op was infringing Art 123(2). The patent was thus revoked.
The board also set aside the decision on costs taken by the OD.
We will concentrate on this aspect of the case.
The OD’s decision on apportionment of costs
The formulation of the decision is as follows:
“.. the Opposition Division apportions to the Proprietor the costs of the remuneration of the representatives of the parties in respect to oral proceedings and for the undue delaying of the procedure in respect of late filing.”
The opponents’ point of view on the apportionment of costs
The repeated and late filing of a large number of requests by the proprietor had caused considerable additional work in the preparation of the first OP and the argument challenging the validity of the priority of D22 only at the OP had necessitated an adjournment of the OP, which had given rise to the costs of the second OP.
The opponent also argued that the AR filed by the proprietor were, to a large part highly non-convergent. Some of those AR were also only filed four days prior to OP.
Additional costs were incurred because the proprietor did not adequately identify the changes in each request. The proprietor chose to point out certain changes in comparison to previous requests, but this made it difficult to assess the changes against the claims as granted.
Furthermore, it was clear from the preparatory communication of the OD that D22 would be a central document in the proceedings since it was regarded as prejudicial to novelty for the subject-matter of claim 1 of the then MR. It was therefore incumbent on the proprietor to have challenged the validity of D22’s priority in good time before the OP.
The proprietor’s point of view on the apportionment of costs
The apportionment of costs to the detriment of the proprietor was not justified. Opponent 1 had for the first time at the OP raised an objection of lack of novelty based on the two figures B34 of D22 against the subject-matter of claim 1 of the then AR 13.
In view of this objection, the proprietor then contested that D22 constituted prior art according to Art 54(3) since the subject-matter of claim 1 of AR 13 enjoyed the same priority date as the relevant embodiment of D22. The OD then adjourned the OP to analyse the priority situation.
The number of requests had been reduced from 29 to 16, meaning that they had not been submitted in abuse of any rights. Of the 16 requests submitted shortly before the OP, only six requests, MR and AR 1 to 5, were new.
Even if these requests were submitted late, opponents can be expected to prepare for the question of their admissibility as for instance held in T 1848/12.
The board’s decision on apportionment of costs
On the form
The board emphasised that an order on the apportionment of costs under Art104 must clearly state (at least) the kind of costs to be borne by the burdened party. The order referred to does not in any way comply with this requirement.
The order is so vague that it is not possible to clearly determine in particular,
- (a) whether the costs for the representatives in preparing for the OP are included, and
- (b) whether the costs for the representatives for both OP are included.
In that regard it is also noted that according to the Minutes of the first OP, the costs for both OP should be borne by the proprietor
This is however is not properly reflected in the order and cannot be assumed to be covered by that order.
Furthermore, in view of the fact that parties to opposition proceedings have a right to OP, such a ruling – without any limitations of the specific costs to be borne in relation to the OP and without providing sound reasons for such a decision – would not comply with the right to be heard in OP as enshrined in the EPC.
It should also be noted that the addition in the above-mentioned formulation “and for the undue delaying of the procedure in respect of late filing” does not provide a definition of any kind of associated costs and can only be seen as a hint to the reasoning for the decision, which seemingly was based on the principle of procedural economy.
On the substance
For the board, the OD’s decision also fails in terms of substance.
According to the Minutes of the first OP, the OP were adjourned due to the fact that the patent proprietor challenged that D22 constituted prior art under Art 54(3) for the first time. The proprietor in fact challenged the validity of the earliest priority claimed for D22 in view of some embodiments of D22.
In that regard it must be taken into account that a novelty objection based on some embodiment of D22 was raised for the first time in OP in relation to the then AR 13.
Even if a novelty objection based on said embodiment of D22 was already in the proceedings, this does not mean that the proprietor would have been obliged to consider the validity of all the priorities of D22 in regard to that objection.
For the board, it goes without saying that not all the embodiments of a patent application claiming more than one priority necessarily enjoy the right to all of those priorities.
The argument that the patent proprietor should have challenged (one of) the priority(ies) claimed by D22 earlier in the proceedings is therefore not convincing.
For the sake of completeness, it should also be mentioned that D22 was filed after expiry of the time limit for filing an opposition and was used only for the purpose of attacking novelty of claim 1 of the then MR and of the then AR 11.
Thus, the fact that the proprietor did not contest the validity of one of the priorities of D22 until the first OP cannot justify a different apportionment of costs in the present case.
No further justification for the decision on costs is recognisable in the contested decision. Although the decision addresses the repeated and late filing of different sets of claims, it is not clear from the decision itself whether and to what extent these statements were relevant for the decision on costs.
Furthermore, it must also be taken into account that the OD admitted the sets of claims filed shortly before the OP in view of the principle of procedural economy as the number of requests had been reduced from 29 to 16, that AR 6 to 15 corresponded to previously filed requests and that the requests did not drastically change the framework of the opposition proceedings.
Moreover, it is to be noted that the MR and AR 1 to 10 had been found to contravene R 80, i.e. they did not have to be discussed in substance. This means that only AR 11 to 13, which corresponded to previously filed requests, were dealt with in substance during the first OP. The MR and AR 1 to 10 were not admitted under R 80 as the proprietor had deleted the reference signs in all the claims of these requests.
In view of the above, the board did not see any procedurally abusive behaviour on the part of the proprietor, nor does the effort of the opponents caused by the late filing of the requests – which in any case was partly due to the late submission of the objections based on D22 – appear to be unduly high.
The efforts for the preparation of the issue of admittance of the newly filed requests do not appear to the board to have caused unreasonable expense to the opponents. Moreover, such preparatory work can in no way justify the award of the entire costs of the OP.
Comments
The board reminded that in matter of apportionment of costs, not only the reasons of equity leading to a different apportionment of cost should be part of the decision on costs, but also the precise type of costs which result from the alleged misbehaviour of the party should be specified.
Cooperation within the OD
Once again, it is clear that the cooperation within the OD was sub-optimal. The first examiner issued a decision, the second examiner drafted the minutes without checking them with respect to the actual decision, and the chair signed the lot without batting an eyelid.
Reference signs
As far as reference signs are concerned, the situation should be clear since T 237/84. They can be necessary, and it is not for the applicant or proprietor to decide on this point, cf. Reasons 5. I know this decision quite well, as I provoked it as chairman of the then ED. The application had been revoked for lack of reference signs.
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