Reasons of equity will require a decision on the apportionment of costs when the costs arise in whole or in part as a result of conduct of one party which is not in keeping with the care required to assure proper protection of the rights involved, in other words when the costs are culpably incurred as a result of irresponsible or even malicious actions. Each party may of course defend his rights or interests (e.g. the proprietor his patent) by any legally admissible means within the framework of the opposition proceedings; he may, for example, request oral proceedings or the taking of evidence.
Accordingly, costs incurred as a result of default or of inappropriate legal means used by either party may be charged to the party responsible, even if he has been successful in the opposition proceedings.
The following are examples where the principle of equity may be applied:
The costs incurred by the opponent in preparing oral proceedings which have been appointed may be charged to the proprietor of the patent if he surrenders the patent just before the date appointed for the oral proceedings, although it was clear when the proceedings were being arranged, from a document put forward by the opponent, that the proprietor of the patent had no case and he alone therefore was liable for his irresponsible conduct.
If an aspect of the state of the art is adduced as an argument at a late stage and it can be shown, or it is evident, that the party concerned knew of it earlier, e.g. in that he had made prior use of it, the additional costs of further oral proceedings unnecessarily incurred by the other parties may be charged to the party which caused them by submitting his argument at so late a stage.
If relevant facts or evidence are submitted by a party only at a late stage of the proceedings without any good reason and if, as a consequence, unnecessary costs are incurred by another party, the Opposition Division may decide on the apportionment of costs.