In principle, costs are not apportioned differently if the late submission of facts and evidence appears justified. The boards have assumed in particular that belated submission is justified or that no abuse of procedure has taken place if new documents are filed for the first time at a later stage in the proceedings as a reaction to communications from the board, comments from the other party or amendments of the patent or decisions of the department of first instance which make such documents necessary in the first place (see T 582/88, T 638/89, T 765/89, T 472/90, T 556/90, T 334/91, T 875/91, T 81/92 and T 585/95).
(i) No different apportionment of costs ordered
In T 712/94 the board allowed the appellant (opponent) to introduce facts and evidence on alleged prior use at the appeal stage, whilst refusing the respondent's (patentee's) request for apportionment of costs. The patentee had been made aware of the prior-use documents during negotiations conducted well before the first-instance decision was taken. Thus they had not taken him by surprise when later introduced into the appeal proceedings following failure of the negotiations. The board could therefore see no reasons of equity requiring a different apportionment of costs.
In T 1167/06 the board did not consider it an abuse of procedure that two weeks before the oral proceedings the appellant filed three further auxiliary requests, additional arguments and four short documents, the latter illustrating common general knowledge on issues that had already been discussed. The need to translate the requests and documents and the resultant costs were in the nature of the European procedure with three official languages and affected all parties in equal measure. As the language of the proceedings for the patent was German, the respondent had to expect many submissions to be made in that language. The respondent stated that an additional representative had had to deal with the late filing and travel to the oral proceedings because the representative assigned the case had been on leave at the time in question. In the board's view, however, the representative's absence on leave was not the fault of the other party. Moreover, the respondent (opponent) had been represented by the same two representatives before the opposition division, so the additional representative had not needed much time to familiarise himself with the latest dossier updates.
Similarly, in T 29/96 the request for a different apportionment of costs was refused. A new document which was fairly simple and straightforward in content had been filed together with the statement of grounds of appeal. The board ruled that this was the earliest possible moment that the document could have been submitted. In any event, the introduction of the new document could not be regarded as having given rise to a new opposition; it had not introduced new closest prior art, but was merely a new secondary information source. In the case before the board, it was logical for the appellant, as the losing party in the opposition proceedings, to introduce the document into the appeal proceedings in an effort to improve his position by filling a gap referred to in the impugned decision.
In T 1171/97 the board rejected a request for apportionment of costs because it was satisfied that the new documents which had become known to the appellants (opponents) in the course of another search had not been filed in order to obstruct the proceedings, but because they contained aspects which, according to the statement of the opposition division, had not been found in the previously available references.
In T 554/01, the applicant submitted a number of documents following the negative decision taken by the opposition division. The board held that the mere fact that certain documents had been submitted at a late stage did not justify a finding that there had been an abuse on the part of the applicant, especially where they had been submitted as a result of a legitimate desire to supplement the line of argument which had been unsuccessful before the department of first instance. Moreover, the respondents had not shown that they had incurred additional costs as a result of the documents' introduction into the proceedings.
In T 507/03 the opposition division had regarded the claimed invention as being patentable over the documents cited by the opponent. As a reaction to the reasons given in the impugned decision, the opponent (appellant) filed a new set of documents in the appeal proceedings, after the nine-month period for filing opposition. Refusing the request for a different apportionment of costs due to the late filing, the board argued that, according to Art. 108 EPC 1973 (minor editorial changes only) and R. 65 EPC 1973 (now R. 101 EPC), a statement of grounds of appeal had to identify the extent to which amendment or cancellation of the decision was requested. This, however, did not forbid a losing opponent from filing new pieces of prior art if it was felt that they could counter the reasons given in the appealed decision. Further, the new documents were all easily understandable and had not caused an unreasonable amount of extra work such as to justify departure from the normal rule that each party meets its own costs pursuant to Art. 104 EPC 1973.
In case T 242/04, the board held that the respondent's late filing was made in response to a communication of the opposition division for making written submissions and took place roughly one month before expiry of the final date accorded in the communication as well as roughly two months before the date for oral proceedings. The circumstances were therefore not such that there was no justification for the late filing or that it could be held that the respondent acted in bad faith. In addition, the appellant who requested an apportionment of costs and, in particular, reimbursement of the travel costs of a technical expert, neither gave any reasons let alone any evidence for the necessity of the technical expert's presence at the hearing before the opposition division, nor provided any evidence that the respective trip was caused only by the said late filing. Therefore, a different apportionment of costs was not regarded as justified.
The board in T 333/06 found that the appellant's maintenance of his request for admission of the fresh ground for opposition - lack of inventive step - and of the new supporting documents after being notified of the board's preliminary negative opinion did not constitute abuse, as that opinion was not a final decision. Furthermore, while the appellant might have acknowledged that the new documents were not relevant to novelty, objectively he could not be censured for having maintained them in the hope that his oral presentation would result in the admission of lack of inventive step as a fresh ground for opposition and hence of the new documents relevant to inventive step. Thus while this had admittedly made the respondent's preparations for oral proceedings more difficult than they would have been if the appellant had withdrawn the new documents, the procedural conduct on the part of the appellant which had necessitated those preparations was not abusive but one of the appellant's legitimate prerogatives.
(ii) Different apportionment of costs ordered for reasons of equity
In T 847/93, the board admitted a statement of grounds of appeal documenting new prior art. Mitigating circumstances for the late filing of new facts and evidence were put forward by the appellants and were held to be credible by the board. On the other hand, the board was also of the opinion that it was credible that the costs incurred by the respondents were higher as a result of the introduction of an entirely fresh case than if the facts and evidence had not been filed at a late stage. It therefore decided to order an apportionment of costs under Art. 104(1) EPC 1973 according to which the appellant had to pay the respondents 50% of the costs incurred by the respondents - after remittal to the department of first instance - in respect of the subsequent oral proceedings and the taking of evidence as well as in any subsequent appeal. In T 1137/97, a belatedly submitted document was likewise admitted into the proceedings and a different apportionment of costs was ordered. In determining the costs, the board itself, exercising its discretion under Art. 111(1) EPC 1973 (unchanged), awarded a fixed sum of EUR 2 500 to avoid the need for an exact investigation of the amount, which would have been more burdensome for the parties.
In T 937/00, the board found that all the requests presented by the appellant in writing in advance of the oral proceedings were clearly inadmissible and their filing could hardly be considered appropriate in the circumstances of the case, in which the appellant had chosen to file an exceptionally high number of independent claims in response to the notice of opposition: he had presented amended independent claims 2, 5, 29 and 69 at the appeal stage only, having filed no fewer than six different versions of the claims during the opposition procedure, and independent claims 5 and 58 had in effect countered the limitations brought to independent claims 2 and 29. At the very end of the oral proceedings, he had even filed a third auxiliary request according to which all the claims which had been contested in the appeal procedure were simply abandoned. In these circumstances, the board felt compelled to admit the belated auxiliary request, as had the board rejected the appellant’s third auxiliary request, the appeal would have been dismissed and the revocation of the patent would have become final. The board also remitted the case to the department of first instance, none of the remaining claims having ever been considered by the opposition division. However, the board deemed it appropriate for reasons of equity to order an apportionment of the costs of the oral proceedings such that the appellant bore 50% of the costs incurred by the respondent in travel expenses and remuneration for his representative for the purpose of attending the oral proceedings.