2.5. Other cases

In T 952/00 the board found that 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 the direct cause of the costs in suit. In the case in point, it transpired that the proprietor had culpably made inaccurate statements in the course of the proceedings. The board concluded that without those false statements the opponent (appellant) would not have been required to go to the expense of gathering further evidence. Its request for an apportionment of the costs it had incurred during taking of evidence after notification of the decision at first instance was therefore granted.

In T 1714/14 the respondent (patent proprietor) had not filed a full copy of P1 but only one page. According to the appellant (opponent), this behaviour confirmed the patentee's intention to withhold information relevant for the issues to be decided. The board held that, even if the impression resulting from the content of the sole page of P1 could be misleading in the context of the proceedings, nothing pointed in the direction of the appellant's costs incurred by the opposition proceedings being attributable in any causal fashion to negligent or even abusive behaviour by the respondent. For this reason alone, no apportionment of these costs could take place. The case in hand also differed from T 952/00, where inaccurate statements had culpably been made, as well as from T 273/10, where documents had abusively been withheld.

In T 269/02, according to the respondent, the appellant had been given sufficient opportunity before the opposition division to amend its claims to overcome 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 However, the appellant had chosen not to do this, with the result that the patent was revoked on this ground, rendering necessary the appeal proceedings, which dealt solely with the issue of amendment. Contrary to the respondent's assertions, the board stated that in cases such as the present, where the patent had been revoked in opposition proceedings, the appellant must be given the opportunity to study the decision of the opposition division duly substantiated in writing in order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, in a way which arbitrarily caused the respondents to incur costs which, in all fairness, ought to be reimbursed. The request for an apportionment of costs was therefore refused.

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 (likewise T 967/12).

In T 1087/20 and T 1549/22 the board recalled that the withdrawal of an appeal, even shortly before the oral proceedings, did not per se constitute a reason to impose costs on another party in the absence of additional circumstances amounting to an abuse of procedure. In the board's view, the same principles also applied to an applicant's or patent proprietor's unfettered freedom to withdraw their consent to the text of a patent at any time during the appeal proceedings (see e.g. T 1484/19 of 4 July 2023 date: 2023-07-04). The withdrawal of the consent some two weeks before the oral proceedings was clearly not a sufficient indication of such an abuse of procedure, particularly in light of the complexity of the case, regardless – at least in principle – of the motivation for the withdrawal.

In T 916/05 the circumstances did not 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 argument when making its case before a board of appeal.

In T 248/05 the board held 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 apportioning the respondent's costs to 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.

In T 854/12 the board decided that a different apportionment of costs was justified where procedural stages had needlessly had to be repeated because a lack of clarity as to the owner of the company purportedly acting as a party had been deliberately exploited or at least knowingly allowed to persist during the proceedings.

In T 967/18 the patent proprietor had only informed the EPO of its entry into voluntary administration three years earlier in the context of a request for registering a change of ownership. The Legal Division then ordered ex officio an interruption of the proceedings under R. 142(1)(b) EPC with effect as of 11 November 2016, to resume 4 November 2019. As a result of this interruption, the appealed decision of 5 February 2018 to revoke the patent was found to be "invalid". The board held that the patent proprietor's conduct in failing to notify the EPO of its entry into voluntary administration was the result of an error of assessment. This error was not due to such a gross lack of care that could be considered equivalent to wilful misconduct.

In T 194/21 the respondent (patent proprietor) argued that the circumstances of the case demonstrated the appellant's intention to divert the proceedings from their purpose for tactical ends, namely to keep the opposition proceedings pending for as long as possible in order to delay the outcome of the infringement proceedings in France. The board considered that the facts put forward demonstrated a certain carelessness but were not sufficient to characterise an abuse of procedures. Furthermore, a request for apportionment could only succeed if there was a proven causal link between the allegedly improper conduct and the costs at issue. In the case in question, the respondent had not specified what additional costs would have resulted from the purported tactical extension of the opposition proceedings. As for the costs incurred in defending themself in the appeal proceedings, they were inherent in the appellant's exercise of their right to appeal. Finally, the appellant's absence from the oral proceedings had not rendered them superfluous.

In decision T 2175/15 of 11 June 2024 date: 2024-06-11 on the apportionment of costs, the board did not consider it justified, for reasons of equity, to order the appellant (opponent) to pay the costs of the opposing appellants (patent proprietors) for filing a total of five partiality objections. It did not share the patent proprietors' view that the option afforded by the EPC to file a partiality objection should only be used in exceptional cases. Furthermore, the board could see no reason why the opponent's behaviour should be culpable or an abuse of procedure.