Reasons of equity will require an opposition division to decide on issuing an order to apportion 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. Parties may of course defend their rights or interests (e.g. the proprietors defend their patent) by any legally admissible means within the framework of the opposition proceedings; they 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 that party has been successful in the opposition proceedings. Situations resulting from "force majeure" (such as absence at oral proceedings due to a sudden serious illness) do in general not lead to the apportionment of costs.
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 patent proprietors if the latter surrender 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 patent proprietors had no case and that they alone were therefore liable for their 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 the party in question 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 this argument at such a late 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.