2.2.2 Request for scheduling or postponement of oral proceedings; withdrawal of request for oral proceedings

Nothing in the EPC prevents a party from withdrawing a request for oral proceedings at any stage of the procedure. The withdrawal of such a request is not culpable conduct as such and cannot be a factor in assessing whether reasons of equity exist in accordance with Art. 104(1) EPC 1973 (T 91/99).

On the basis of Art. 116(1) EPC 1973 any party has the exclusive right to request oral proceedings if it considers them to be necessary. The fact that one of the parties has to travel a longer distance than the other does not make the request for oral proceedings abusive. Furthermore, an objection of abuse based on the fact that the problems to be discussed in oral proceedings are simple ones and could easily be presented in writing cannot be sustained (T 79/88).

In T 297/91 it had, for a number of reasons, not been possible to decide all the issues during the first oral proceedings, with the result that the respondent (patent proprietor) had requested that oral proceedings be held for the second time and that the costs incurred be borne by the appellant. The board rejected the request for apportionment of costs because the further oral proceedings had become necessary for reasons beyond the patent proprietor's control.

In T 432/92 postponement of the oral proceedings was requested two days prior to the agreed date as the father of the respondents' representative had died on the previous day. The appellants requested a different apportionment of costs because their representative had already travelled from America to the EPO, thereby incurring unnecessary costs. They argued that the respondents could have been represented by someone else from their patent attorney's firm. The board refused the request because there had been no recognisably wrongful or irresponsible conduct on the part of the other party. The board was of the opinion in particular that the respondents could not be expected to be represented by a different patent attorney, who would have had to prepare two oral proceedings in one day (one for an ongoing parallel case) and to travel as well.

In T 154/90 (OJ 1993, 505) the opponents had initially insisted on oral proceedings, although the opposition division did not consider that they were necessary. However, eight days before the arranged date the opponents informed the opposition division that they wished to cancel the oral proceedings. For reasons of internal organisation at the EPO, the opposition division did not receive this letter until after the date of the oral proceedings. The board of appeal ruled that eight days was a sufficient period of time for the oral proceedings to be cancelled, since no evaluation of new facts or arguments was needed (the case was different in T 10/82, OJ 1983, 407). Since the letter was received too late for purely internal reasons, the opponents were not at fault. They were not obliged to bear a part of the costs of the other party. A change of opinion regarding the necessity of oral proceedings could not be regarded as culpable conduct either (see also T 383/05).

In T 721/96 of 15 September 1998 date: 1998-09-15 the respondent informed the board and appellant, four working days before the date set for oral proceedings, that it was abandoning the patent and no longer requesting oral proceedings. However, the declaration abandoning the patent was not completely unambiguous. The board refused the appellant's request that costs be awarded against the respondent; it had been clear that the oral proceedings would probably be superfluous and the appellant could have contacted the DG 3 Registry to find out about the course the proceedings would be taking.

In T 556/96 the appellant withdrew his request for oral proceedings early in the afternoon preceding the oral proceeding. By that time, the opposing party's representative had already set off. The board ruled that the appellant had withdrawn his request too late. The fact that the other party had also unconditionally requested oral proceedings was irrelevant; it too could have withdrawn the request, had it known in time that the appellant would not be attending. The board therefore ordered the appellant to pay the costs incurred by the respondent in preparing and attending the oral proceedings.

In T 42/99 appellant I announced, as early as one month prior to oral proceedings, that experts would attend those proceedings. Only shortly before the appointed date for the proceedings, appellant II submitted a request that statements by an expert be admitted at the oral proceedings. Appellant II also requested the postponement of the oral proceedings so that its expert would have enough time to prepare. The board decided to postpone the appointed date, however, in doing so, the board also regarded it as equitable to order a different apportionment of costs. In its reasons the board took the view that, although a reply from appellant II to the announcement by appellant I that experts would attend the oral proceedings would not have been possible within the time limit set by the board, a "response" to the aforementioned announcement should have followed immediately and not shortly before the appointed date for oral proceedings. At this late stage, it was plausible that the representative of appellant I had made arrangements for the trip to Munich and a hotel reservation, which could not be cancelled without a financial loss.

In T 99/05 the appellant submitted, 13 days before the oral proceedings, a new experimental report in view of which the respondent asked for postponement of the oral proceedings. The appellant strongly objected to such a postponement. Since, in the board's view, the question of postponing the oral proceedings was linked to the question of whether the late-filed experimental report should be introduced into the proceedings, the board deemed it appropriate to maintain the oral proceedings in order to hear the arguments of the parties concerning the relevance of the late-filed experimental report of the appellant, and hence to decide on the introduction or not of this report into the proceedings. However, the oral proceedings did not result in a final decision with regard to patentability and second oral proceedings were scheduled in order for the respondent to be allowed sufficient time to file counter-experiments. Whilst the late filing did not represent an abuse of proceedings, it was evident that the final outcome of the proceedings had been delayed. Therefore, the board found it appropriate for reasons of equity to order a different apportionment of costs.

In T 490/05, on the day before oral proceedings, the proprietor had withdrawn both his request for oral proceedings and his request to have the impugned decision set aside. Thus, even before oral proceedings it was clear that the impugned decision revoking the patent was sure to be made final. This gave him the advantage of being able to focus his preparations for the oral proceedings on the proprietor's request for apportionment of costs. Thus there were no reasons of equity for sharing the costs incurred by the opponent.

In T 1771/08 the board held that an apportionment of costs under Art. 104(1) EPC could be ruled out from the outset for lack of equity if the representative of the party requesting a different apportionment owing to postponement of the oral proceedings had unreservedly agreed to their postponement.

In T 258/13 the appellant withdrew its request for oral proceedings two days before the oral proceedings, which de facto amounted to only one day in view of the lateness in the day (5 p.m.). This was not notification in good time. Citing T 556/96, the board held that the appellant's request had to be treated as having been received so late that the respondent would already have had to be fully prepared, taking further into account the necessary travelling time during the day before the oral proceedings. An apportionment of costs in favour of the respondent was appropriate. However, for the oral proceedings only the presence of an authorised representative was necessary. The attendance or not of an accompanying person had no bearing on the conduct of the oral proceedings and was a matter of a deliberate choice by a party in which the other party did not need to be involved. Also to charge the appellant costs incurred by the accompanying person would contravene the principle of equity.

In T 169/14 the board held that there was an equitable obligation on every party summoned to oral proceedings to inform the EPO and the other party as soon as possible, once it had decided that it would not be attending or was withdrawing its request for them. Consequently, in cases where a party unduly delays its decision not to attend the oral proceedings, or the withdrawal of its request for them, or its communication of this to the board, an apportionment of costs in favour of the other party could be justified if the costs were directly caused by the fact that the notice was not filed in due time. In the case at issue, the appellant withdrew its request for oral proceedings only one week before the scheduled date. However, the appellant at the same time submitted observations in reply to the board's preliminary opinion and requested that they be taken into consideration by the board in reaching its decision. Had the board found the appellant's new submissions admissible and convincing, oral proceedings would have had to take place in view of the respondent's conditional request for them. Additionally, there were no facts on file indicating that the appellant unduly delayed his notice or conducted himself in a clearly improper or irresponsible manner.