In T 952/00, the board found that the requirement of equity was a matter for the body hearing the case to decide at its discretion in the light of the facts. The wrongful act, whether intentional or simply the result of culpable negligence, had to be judged in the light of the normal behaviour of an ordinarily diligent party. It also had to be clearly and obviously the direct cause of the costs which should not have been incurred. In the case in point, it was important to compare the evidence given by the opposing party at first instance with the additional evidence he had had to give at the appeal stage, bearing in mind the evidence to the contrary given by the patent proprietor at both instances. The board found that the statements made by the proprietor on the accuracy of the opponent’s allegations had varied considerably over time, whereas the opponent’s allegations had remained consistent. The board concluded that without the false statements of the patentee the opponent would not have been required to go to the expense of gathering further evidence. The request of the opponent (appellant) for an apportionment of costs was therefore to be granted.
In decision T 461/88 (OJ 1993, 295) the board decided that the appellants' insistence on hearing witnesses was clearly compatible with the principle of the responsible exercise of rights, as this may well have been the only means of proving the alleged public nature of the prior use. The board refused the request for apportionment of costs.
In T 269/02 the appellant had been given sufficient opportunity during the protracted written proceedings and at the oral proceedings before the opposition division to amend its claims to alleviate the problem under Art. 123(2) EPC 1973. However, the appellant had chosen not to do this, with the result that the patent was revoked on the ground of Art. 123(2) EPC 1973, rendering necessary the present appeal proceedings which dealt solely with the issue of amendment. In view of this, the respondent argued that the appellant's conduct had been far from exemplary and, if the appeal were to be allowed, and the case remitted to the opposition division, the appellant should be made to bear the costs incurred as a result of the present appeal proceedings. Contrary to the respondent's assertions, the board stated that in cases such as the present, where the patent had been revoked in opposition proceedings, the appellant must be given the opportunity to study the decision of the opposition division duly substantiated in writing in order to enable it to decide on the formulation of appropriate requests for the appeal proceedings. In these circumstances, the board did not find that the appellant had abused or exceeded its legitimate rights, thereby arbitrarily causing the respondents to incur costs which, in all fairness, ought to be reimbursed. The request for an apportionment of costs was therefore refused.
Similarly, the circumstances underlying T 916/05 did not, according to the board, justify a different apportionment of costs. The fact that some of the arguments had not been presented before and could have been filed in oral proceedings before the opposition division, had such proceedings taken place, was in the board’s opinion irrelevant and could not be regarded as an abuse of procedure. In fact, an appellant could not be prevented from choosing a different line of arguments when making its case before a board of appeal.
In T 162/04 the respondent requested a different apportionment of costs because it had had to invest a considerable amount of time and effort in considering the numerous requests submitted by the appellant during the appeal proceedings. However, the appellant's requests were later withdrawn rendering the time and effort of the respondent, in its view, useless. In the board's judgment, such conduct did not amount to an abuse of procedure. Indeed, the conduct of the appellant, who by withdrawing the contested requests and by replacing them with other requests was apparently trying to overcome the objections which had been raised, was not as such objectionable but had to be considered as a legitimate defence of its case. The request for an apportionment of costs was therefore refused.
The request for apportionment of costs made by the respondent in case T 248/05 was mainly based on the alleged lack of clarity of the category of claim 1 as granted and the vagueness in this respect of the appellant's submissions in the statement setting out the grounds of appeal. The board held, however, that the alleged lack of clarity of the category of the claimed subject-matter and the possible associated additional costs which could be incurred by a clarification of this subject-matter would not justify an apportionment of the respondent's costs on the appellant. Firstly, the criticised elements of claim 1 and the alleged vagueness of the statement setting out the grounds of appeal were entirely irrelevant for the subject-matter of the appeal in point, i.e. the findings of the opposition division on added subject-matter. Secondly, lack of clarity of a claim or of a submission could hardly be regarded as an abuse of procedure unless this were intentional. The board therefore saw no legal basis for any apportionment of costs.