Zusammenfassung von EPC2000 R 099(1)(c) für die Entscheidung T2197/16 vom 13.05.2022

In T 2197/16 the appellant (opponent) had appealed the opposition division's decision to maintain the patent. In the decision under appeal, the opposition division had also ordered the patent proprietor to pay the costs of the oral proceedings to the opponent under Art. 104(1) EPC. The respondent (patent proprietor) requested that the decision on the apportionment of costs be admitted in the appeal proceedings and set aside. The board ruled that the respondent's requests concerning the opposition division's decision on apportionment of costs were inadmissible for the following reasons. According to Art. 108, first sentence, EPC and R. 99(1)(c) EPC, the notice of appeal had to contain "a request defining the subject of the appeal". The appellant's initial request defined the extent of the appeal proceedings and the appellant could file an appeal against the decision taken as a whole or in part (see G 9/92 and G 4/93, point 1 of the Reasons; and G 1/99, point 6.2 of the Reasons). This was the principle of free party disposition (ne ultra petita). In the case in hand, the notice of appeal clearly showed that the appellant (opponent) did not appeal the opposition division's decision on the apportionment of costs. Nor did the statement of grounds of appeal refer to the issue of the apportionment of costs. Therefore, the opposition division's decision in this respect was not the subject of the appeal. The board further noted that the situation in this case was different from that where the patent proprietor appealed a decision of the opposition division which adversely affected them alone and the opponent raised further objections to the patent as granted or amended. In such a case the opponent's objections related to the subject of the appeal and therefore did not extend the subject of the patent proprietor's appeal. In view of the above, the board concluded that the issue of the apportionment of costs was a legal issue which could not be dealt with and decided on in the appeal proceedings, since it was not the subject of the appeal. For that reason alone, the respondent's requests regarding the decision on the apportionment of costs were not admissible. The board also made a point to refer to decisions T 753/92 and T 762/96, stating that the general considerations of these decisions were applicable here mutatis mutandis since, if the respondent had lodged an appeal against the opposition division's decision on apportionment of costs, the appeal, with the apportionment of costs as its sole subject, would have been inadmissible under Art. 106(3) and R. 97(1) EPC. The respondent was only a party to the proceedings under Art. 107, second sentence, EPC, and did not have the right to file a "cross-appeal" without limit of time and, unlike the rights the respondent would have as appellant, its requests were therefore subject to restrictions (see G 9/92, point 16 of the Reasons).