Cost distribution for non-attendance at oral proceedings – T2350/15
In the past years, the EPO took measures in order to streamline the opposition and appeal proceedings, including oral proceedings. Parties are essentially requested to use oral proceedings only to the extent necessary for defending their case.
According to Article 104(1) EPC, each party to opposition proceedings must bear the costs it has incurred. However, the Opposition Division or Board of Appeal may, for reasons of equity, order a different apportionment of the costs.
In the case T2350/15, the Board of Appeals applied this policy to the appellant/opponent.
Before the Opposition Division, the patent in suit was maintained in amended form. Both parties, opponent and patent proprietor, filed an appeal and requested oral proceedings.
The Board of Appeals issued a citation to oral proceedings and the appellant/opponent replied on December 10, 2019 by stating that it will not attend, but did explicitly not withdraw the request for oral proceedings. It is to be noted that generally, the sole statement of non-attendance is considered equivalent to a withdrawal of the request for oral proceedings.
Subsequently, the Board of Appeals emitted a preliminary opinion on December 11, 2019 in which it stated that the interpretation of features of claim 1 is crucial for determining whether the claim extends beyond the application as filed. As to an alleged insufficiency of disclosure, the Board of Appeals stated that it does not consider the objection founded. Further, novelty and inventive step would have to be discussed during oral proceedings.
The appellant/patent proprietor was present at the oral proceedings but not the appellant/opponent, the Board of Appeals accepted the main request and thus maintained the patent as granted.
Further, as the appellant/opponent had explicitly not withdrawn the request for oral proceedings, the cost generated by the oral proceedings for the appellant/patent proprietor was imposed on the appellant/opponent.
The decision by the Board of Appeals mentions that the apportionment of cost is due to the intention by the Board of Appeals to maintain the patent according to the main request of the proprietor. However, the preliminary opinion was ambiguous in this respect.
It has to be noted that the apportionment of cost was apparently taken ex-officio, without the patent proprietor even requesting it.
This decision shows that, in case non-attendance at oral proceedings is intended, it should be borne in mind that explicitly maintaining the request for oral proceedings creates the risk of having to bear the cost of the other party.
The complete text of the decision is available here: https://www.epo.org/law-practice/case-law-appeals/pdf/t152350eu1.pdf
This IP Alert is for information purposes only and does not constitute legal advice.