Late submission was unjustified 

In principle, submissions at a late stage in the proceedings justify a different apportionment of the costs for reasons of equity if there is no justification for the late filing. In the absence of cogent reasons to justify the late submission, a different apportionment of costs will usually be ordered unless the late submission is shown not to have been disadvantageous to the other party.

(i) Different apportionment of costs ordered

In T 117/86 (OJ 1989, 401) the appellants had produced, together with their statement of grounds, two new documents and an affidavit in support of the contention that the opposed patent lacked an inventive step. The board concluded that the fact that new documents were presented after the nine-month period for filing opposition could itself give rise to additional expenditure for the other party, and that the costs should be apportioned differently for reasons of equity.

The board in T 83/93 held that it was an abuse of the appeal procedure to submit five new documents as evidence 40 months after the end of the opposition period (without giving reasons) and to revive an objection under Art. 100(c) EPC 1973 (unchanged in substance) on the basis of new facts and evidence 51 months after the end of the opposition period. As a result of the appellant's unsubstantiated late filing of evidence, the respondent had incurred higher costs than if all the evidence had been submitted within the nine-month opposition period, in which case all the items (prior art documents and comparison of the original documents with valid documents) could have been dealt with in a single operation.

The fact that the appellant relied on three new documents exclusively, in the statement of grounds of appeal and for the first time even raised the issue of novelty in the patent in suit on the basis of a document already discussed, was regarded in T 416/87 (OJ 1990, 415) as an abuse of the opposition procedure. By introducing arguments and documents which bore little relation to the content of those filed in the original opposition, the appellant had produced virtually a new opposition at the appeal stage. This could not, by definition, be the purpose of an appeal. The late filing of documents must have considerably increased the costs incurred by the respondent, compared to what they would have been if all facts and evidence had been filed within the nine-month period. Although the respondent clearly envisaged requesting a decision on costs in the event of oral proceedings only, the abuse of procedure justified the apportionment of costs incurred during the taking of evidence.

In T 867/92 (OJ 1995, 126) the claims had been amended during the opposition proceedings. Eighteen months after the claims had been amended the appellant (opponent) cited in the statement of grounds of appeal a new prior art document. The board held that the EPC does not impose a time limit for citing new prior art in response to an amendment of the claims. However, an opponent who cites new prior art with a considerable delay with no special reason justifying the delay runs the risk of having to bear the proprietor's costs incurred in attending oral proceedings which cannot bring the case to an end because of the new citation. However, as there was no suggestion that the appellant (opponent) wilfully abused the procedure in the case at issue, the board considered that it would be equitable to order the appellant to pay only half those costs.

In T 514/01, the board found that the late allegation of public prior use during the first oral proceedings before the opposition division had given rise to additional costs because second oral proceedings before the opposition division had been needed to investigate the alleged prior public use. The award of costs was therefore equitable, which meant that the board could not grant the request made by the appellants (opponents) that the costs decision ordering them to bear the costs of the first oral proceedings be set aside.

In T 416/00 the appellant (opponent) submitted a document which had been cited in the patent in suit and mentioned in the opposition proceedings but had never been discussed between the parties until the appeal proceedings, and had even been expressly excluded before the opposition division. The board found that the opponent's attempt to make surprising use of a document that it had disregarded in the oral opposition proceedings ran counter to the speedy conclusion of the proceedings before the two departments, both in the interest of the parties and in the interest of the general public and the EPO. Even if this was not a deliberate tactic on the opponent's part, the result was the same in terms of the principle of fairness governing proceedings and required in relations both among the parties and between the parties and the EPO. As the respondent's request for a different apportionment of costs was well-founded, the costs of the oral proceedings at issue were charged to the appellant.

In T 671/03 document D18 was first filed in the appeal proceedings and deemed to constitute an amendment to the appellant's submissions pursuant to Art. 10b RPBA 2003 (now Art. 13 RPBA). If it had been filed within the opposition period, there would have been no need to discuss its admission during the oral proceedings in the appeal. The costs for preparing and attending the oral proceedings before the board, which mainly discussed the admission of D18, could have been avoided. For reasons of equity the board ordered a suitably modified apportionment of costs.

Remittal to the department of first instance does not mean that the late filing of documents by the respondent gives rise to a disproportionate cost burden in relation to the appeal at issue (T 1182/01). Where a document successfully introduced at a late stage is of such relevance that the board decides to remit the case to the department of first instance in order to allow the patentee to have his case decided by two instances of jurisdiction, then in the absence of any convincing explanation for the late introduction of that document, the costs between the parties should be apportioned in such a way that the late-filing party should bear all the additional costs caused by his tardiness. Costs should only be shared between the parties if there exist strong mitigating circumstances for the late filing of facts, evidence or other matter, for example, where the document introduced was obscure and therefore difficult to get hold of (T 326/87, OJ 1992, 522 and T 611/90, OJ 1993, 50).

The board in T 874/03 ruled that when late filing of facts and evidence necessitated remitting the case to the department of first instance, the costs of any oral proceedings in the appeal proceedings were normally to be borne by the party responsible for the late filing. The filing of document D4 for the first time during the oral proceedings, and its subsequent admission into the proceedings, would inevitably increase the costs to be incurred by the appellant (patent proprietor) in defending his patent, compared with the normal costs he would have incurred if D4 had been filed in due time. Such late submission was not justified by a change in the subject of the proceedings. Therefore it was equitable in the case at issue that the expenses (travelling and accommodation costs for the appellant's two participants) incurred by the appellant (not acting through a professional representative) in connection with the oral proceedings in the appeal should be borne by the respondent.

In T 2233/09 the board concluded that it would have been possible for the appellant to submit the evidence necessary to prove transfer of appellant status well ahead of the oral proceedings and that it was its conduct that had caused the adjourning of the oral proceedings. Therefore, for reasons of equity, the respondent’s costs for the new oral proceedings had to be borne by the appellant.

In T 1033/09, the oral proceedings had been adjourned following the admission of an auxiliary request submitted by the respondent during those proceedings. For the board, there was no doubt that this auxiliary request constituted an amendment to the respondent's case after it had filed its reply to the statement of the grounds of appeal, and so one within the meaning of Art. 13(1) RPBA. As a result of the adjournment, occasioned partly by admission of the auxiliary request, the appellant had inevitably incurred higher costs than it would have done if it had been possible to deal with all the auxiliary requests during the first oral proceedings. The board therefore found it equitable to apportion the costs in the appellant's favour.

(ii) No different apportionment of costs ordered - no disadvantage

In a number of cases the boards have refused a different apportionment of costs despite unjustified late submission because they were of the opinion that the belated introduction of new documents was not disadvantageous to the other party.

In T 330/88 the respondents filed a new document two days prior to the oral proceedings. The board took the view that the late filing was unjustified but that an apportionment of costs would not be equitable as the appellants had had sufficient time to deal with the document, especially since the decision was not taken until four months after the oral proceedings and following the opportunity to present comments.

In T 633/05, the appellant referred for the first time in the statement of grounds of appeal to a document which had been cited in the European search report but not considered in the opposition proceedings. In the board's view, the appellant sought to provide new evidence in support of a ine of argument already put forward in the opposition proceedings, namely the fact that certain features of the present invention were known in the art. As the said document was cited in the statement of grounds of appeal and was anyway part of the examination file, the respondent had had ample time to study the content of this fairly short document and prepare a rebuttal against the appellant's allegation that it disclosed some key features of the contested patent. Thus, the board had no reason to suspect that the appellant's late filing might have been aimed at delaying the appeal proceedings, or that it resulted in the respondent being burdened with unreasonable additional costs.

In T 273/10, the board found that the opponent had abusively withheld the document in question, which ought to have been submitted for adversarial scrutiny in good time. However, it also observed that this had not been the only reason why further oral proceedings had been necessary. At the stage when the initial proceedings had been adjourned, it would anyway have been impossible to close them the same day. The board noted that a full day had been needed for the second set of proceedings and, moreover, that continuation of the proceedings had given the proprietor an opportunity to put forward new auxiliary requests.

It followed that, since both parties had benefited from the holding of further oral proceedings, it would not be equitable to order the opponent to bear the costs alone.

In T 525/88, the late filing was unjustified, but the request for apportionment of costs was rejected because the documents were of no relevance and did not affect the decision. The same applied in T 534/89 (OJ 1994, 464) and T 876/90. In T 882/91, the board did not look into whether the unjustified late submission had led to higher costs because it was of the opinion that the other party had not had to spend very much additional time and energy on the documents which had been submitted late and that there was therefore no reason to apportion costs (see the decisions on similar cases in T 737/89, T 685/91, T 556/90, T 231/90 and T 875/91).

In T 28/91 three documents which had already been submitted to the opposition division were re-submitted at a later stage in the appeal proceedings. The board ruled that the late submission was not disadvantageous as no new arguments had been introduced, and therefore no additional work had been necessary (see also T 133/06).

In T 931/97, the opponent had submitted new evidence in appeal proceedings, which was already known to the patentee from earlier proceedings before the German Patent Office. The board held that where the patentee knew the documents and could assess their prospects a different apportionment of costs was not justified.

T 336/86 involved a special case. The appellants submitted a prior patent belonging to the respondents for the first time in the appeal proceedings, which destroyed the novelty of the patent in suit. The respondents requested an apportionment of costs as the oral proceedings would not have been necessary had the patent been presented earlier. The board agreed that the late submission was not justified and that higher costs had been incurred as a result. However, as the respondents either had - or should have - been aware of the existence of their own patent, it took the view that an apportionment of costs was not justified.

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