Zusammenfassung von EPC2000 Art 104(1) für die Entscheidung T1484/19 vom 04.07.2023

In T 1484/19 of 04.07.2023 the board decided on requests for reimbursement of the appeal fee and apportionment of costs filed on the day of completion of the internal decision-making process for the previous decision T 1484/19 of 29.11.2022. With its letter dated 24 November 2022, the patent proprietor (respondent) had stated that it no longer approved the text in which the patent had been granted and would not submit an amended text. It had also withdrawn all auxiliary requests filed during appeal proceedings. On the morning of 29 November 2022, the board sent to the postal service for dispatch its decision revoking the patent in the absence of a text agreed by the respondent (T 1484/19 of 29.11.2022). On the same day, at 14.55 hrs, appellant 2 (opponent 2) had requested a partial reimbursement of the appeal fee under R. 103(3)(a) EPC and apportionment of costs. The board concluded that the completion of the decision-making process within the meaning of decision G 12/91 had to be determined with reference to a date and not an hour or an exact time on a date. Consequently, appellant 2's requests were filed after the decision-making process had been completed. However, the board questioned whether decision G 12/91 was concerned with a decision as to substance by contrast with the situation in the current case. The board stated that by analogy to the withdrawal of an appeal, it could be argued that the decision of 29 November 2022 brought the appeal proceedings to a close for the substantive merits of the appeal (which were no longer open for consideration in view of the respondent's withdrawal of its approval of any text for maintenance of the patent) while leaving ancillary questions open to a decision. Consequently, the board would have the power to decide on the requests for reimbursement of the appeal fee and for apportionment of costs filed after the completion of the internal decision-making process. The board noticed that a different approach had been taken in T 1556/14 of 15 October 2020. In that case the board had held that a request for apportionment of costs could be admissible despite being filed after termination of the appeal proceedings if the request could not have been submitted earlier. In the current case, the board left open whether and, if so, to what extent legal certainty imposed limitations as to the admissibility of a request for apportionment of costs filed after termination of the appeal proceedings as the request for apportionment of costs was not allowable for the following reasons. The current circumstances did not correspond to any of the situations justifying a different apportionment of costs which are mentioned in Art. 16(1) RPBA 2020. The board did not see anything in the timing of the respondent's letter which amounted to improper conduct of the proceedings or even to an abuse of proceedings justifying a different apportionment of costs. Based on the principle of party disposition, an appellant is entitled to withdraw its appeal and an applicant or patent proprietor is entitled to withdraw its approval of the text of a patent at any time during pending appeal proceedings. Except for where the exercise of the rights conferred by this principle contravenes a party's obligation to act in good faith (as exemplified in Art. 16(1) RPBA 2020), this principle may not be restricted by the threat of an apportionment of costs. For the withdrawal of an appeal, this has been confirmed in the case law and recently acknowledged by the legislators in amended R. 103(4)(a) EPC. Indeed, reimbursement of 25% of the appeal fee is provided even for the withdrawal of an appeal during oral proceedings before the decision is announced. In the board's opinion, the same holds true for a patent proprietor's withdrawal of its approval pursuant to Art. 113(2) EPC, even more so if the parties are informed of it before the oral proceedings. Therefore, the request for apportionment of costs was refused. The board also refused appellant 2's request for reimbursement of the appeal fee under R. 103(4)(a) EPC, since no statement of appellant 2 was on file by which it had withdrawn its appeal. However, in view of decision T 488/18 and the respondent's letter dated 24 November 2022, the board decided to order of its own motion reimbursement of 25% of the appeal fee under R. 103(4)(c) EPC for both appellants.