An apportionment of costs is justified if excessive costs are incurred for the oral proceedings and caused mainly by one party (see T 49/86).
In T 1022/93 the appellant had refrained from communicating in the written appeal procedure why, in his opinion, the amended process claims should be considered inventive and from specifying that the additional example described a process according to the amended set of claims. This made it impossible either to remit the case without oral proceedings or to deal with the substance of the case at the oral proceedings. For reasons of equity, therefore, the appellant was required pursuant to Art. 104(1) EPC 1973 to reimburse to the respondent the costs incurred as a result of the participation at the oral proceedings before the board.
However, in the majority of cases, the boards have found that there was no abuse and have accordingly refused to order a different apportionment of costs. Parties have repeatedly tried to bring about an apportionment of costs on the grounds that no new arguments have been put forward during oral proceedings by the party which requested them and that therefore there has been an abuse of the oral procedure. Although costs were apportioned on these grounds in T 167/84 (OJ 1987, 369), the boards otherwise unanimously took the view that the right to oral proceedings was absolute and therefore not subject to any conditions (T 614/89, T 26/92, T 81/92 and T 408/02). The absence of new arguments is not a reason for apportioning costs - as was found in T 303/86, T 305/86, T 383/87, T 125/89 (departing from the decision at first instance) and T 918/92.
In T 905/91 the respondents had requested a different apportionment of costs on the grounds that the appellants had not brought prepared auxiliary requests to the oral proceedings, which had therefore continued into the afternoon. The board rejected the request for the following reasons. Firstly, the appellants had endeavoured to take account of the reservations expressed by the board and had filed new documents. Secondly, oral proceedings served specifically to clarify the situation completely through the direct exchange of arguments and, if necessary, to rephrase the patent application in the light of the outcome of the discussion. The duration of oral proceedings depended on the particular case; at any rate it was not unusual for such proceedings to continue into the afternoon, and the parties should be prepared for this.
In T 210/98, the respondent requested an apportionment of costs on the ground that the appellant had withdrawn three auxiliary requests at the beginning of the oral proceedings for which the preparation had been time-consuming. The board refused the request, stating that it was normal for parties to prepare themselves thoroughly for oral proceedings. A change of view was one of the situations with which a professional representative could be confronted during oral proceedings. As it was not exceptional for requests to be changed or withdrawn during oral proceedings as a result of the discussion held, no abuse of procedure could be seen in the withdrawal of requests at the beginning of the oral proceedings, which had apparently been a reaction to convincing written arguments.
In T 668/03 the appellant requested an apportionment of costs in view of the fact that oral proceedings had to be held for a second time. As a matter of fact, the former oral proceedings had to be adjourned because the identity of one of the opponents had been drawn into doubt by the appellant during the first oral proceedings. The board pointed out that it was the duty of the respondent to make it clear throughout the procedure who belonged to the group of common opponents. However, had the appellant raised this issue before the first oral proceedings, it could have been dealt with in writing and thus the costs for further oral proceedings could have been avoided. Therefore, the board could not detect any reasons of equity which could be used to order a different apportionment of costs.