Under Art. 104(1) EPC, each party to opposition proceedings must, as a rule, meet the costs it has incurred. However, the opposition division or board of appeal may, for reasons of equity, order a different apportionment of the costs incurred during taking of evidence or in oral proceedings. At the appeal stage Art. 16(1) RPBA also applies, allowing the board, subject to Art. 104(1) EPC, to order a different apportionment where costs arise as a result of: (a) amendments pursuant to Art. 13 RPBA to a party's case as filed pursuant to Art. 12(1) RPBA; (b) extension of a time limit; (c) acts or omissions prejudicing the timely and efficient conduct of oral proceedings; (d) failure to comply with a direction of the board; or (e) abuse of procedure (see old version RPBA in OJ 2003, 89).
As part of the revision process, Art. 104(1) EPC was slightly redrafted and together with Art. 104(2) EPC was amended such that the details of a decision ordering a different apportionment of costs and the procedure for fixing them were transferred to the Implementing Regulations (see R. 88 EPC, formerly R. 63 EPC 1973). Minor amendments were made to Art. 104(3) EPC (alignment in the three official languages, editorial improvement/clarification).
In its decision of 28 June 2001 the Administrative Council established transitional provisions inter alia for Art. 104 EPC (see OJ SE 1/2007, 197), according to which the revised Art. 104 EPC applies to:
- European patents already granted at the time of the EPC 2000's entry into force
- European patents granted in respect of European patent applications pending at that time.
In T 133/06 the board added that Art. 104 EPC belonged to the procedural provisions in the sense that it did not regulate any substantive issue about a patent application or a granted patent, but only issues raised during opposition or appeal proceedings, and related to them. It is a general principle of law that a new procedural law is immediately applicable but has no retrospective effect unless otherwise provided. In other words, when deciding whether the new Art. 104 EPC is applicable in appeal proceedings initiated under EPC 1973, the board must take into consideration not only the fact that, according to the transitional provisions, the new Art. 104 EPC is applicable to granted patents, but also the date of the event which gives rise to the application of this article. This is the only way to give the new procedural provision an immediate application without giving it a retrospective effect.
The phrase "taking of evidence" used in Art. 104(1) EPC 1973 referred generally to the receiving of evidence by an opposition division or a board of appeal (T 117/86, OJ 1989, 401; T 101/87, T 416/87, T 323/89, OJ 1992, 169; T 596/89 and T 719/93). The boards' case law refers to Art. 117(1) EPC (unchanged in substance), according to which "taking of evidence" covers the giving or obtaining of evidence generally in proceedings before departments of the EPO, whatever the form of such evidence, and includes, in particular, the production of documents and sworn statements in writing. The EPC revision transferred the details of the procedure for taking evidence to the Implementing Regulations (R. 118-120 EPC; see Chapter III.G "Law of evidence").