Opposition guidelines CH 9 and 10

Question 1

Chapter IX – Costs

Question 2

1. Charging of costs

Question 3

1.1 General principle

Answer 3

Each party to the proceedings must bear the costs it has incurred. However, an opposition division may, for reasons of equity, order a different apportionment of such costs, which may have been incurred during the taking of evidence, in oral proceedings or under other circumstances.

The phrase “taking of evidence” refers generally to the receiving of evidence by an opposition division, whatever the form of such evidence. It includes among other things the production of documents and sworn statements in writing as well as hearing witnesses (see T 117/86).

Question 4

1.2 Decisions on the apportionment of costs

Answer 4

Apportionment of costs must be dealt with in the decision on the opposition. This apportionment will form part of the main decision and will be incorporated in the operative part of the decision.

The decision will deal only with the obligation on the party or parties concerned to bear costs. The actual amounts to be paid by one party to another must be dealt with in the decision on the fixing of costs (see D‑IX, 2).

A statement that the parties will bear their own costs may be incorporated in the grounds for the decision on the opposition and must be included in cases where one of the parties to the proceedings has submitted a request for a decision on the apportionment of costs which the opposition division does not consider justified.

A decision to apportion costs may be made by the opposition division of its own motion, even if no application for the apportionment of costs has been made.

In the absence of an express decision on the apportionment of costs, each of the parties concerned must bear its own costs.

Question 5

1.3 Costs to be taken into consideration

Answer 5

Apportionment of costs may relate only to those expenses necessary to assure proper protection of the rights involved.

Rule 88(1)

Examples of such expenses are:

(i)
expenditure incurred in respect of witnesses and experts, together with other costs arising in connection with the taking of evidence;

(ii)
remuneration of the representatives of the parties in respect of oral proceedings or the taking of evidence;

(iii)
remuneration of the representatives of the parties in respect of undue delaying of the procedure by one of the parties or in respect of the late filing of documents; and

(iv)
expenditure incurred directly by the parties, i.e. their travel expenses in coming to oral proceedings or the taking of evidence.

Costs incurred in respect of superfluous or irrelevant evidence, etc., cannot be apportioned.

In the order of apportionment as part of its decision, the opposition division will state the kind of costs to be differently apportioned and reimbursed to the receiving party as clearly and precisely as possible.

Question 6

1.4 Principle of equity

Answer 6

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.

Question 7

2. Procedure for the fixing of costs

Question 8

2.1 Fixing of costs by the opposition division

Answer 8

The formalities officer is entrusted with fixing the amount of the costs to be paid to the beneficiary at the request of at least one party. The request from a party to the proceedings to fix the costs is admissible only if the decision in which the apportionment of costs was ordered has become final.

Art. 104(2)
Rule 88(2)

A list of costs, with supporting evidence in respect of each amount involved, must be attached to the request. Costs may be fixed once their credibility is established.

Rule 88(2)

The parties will be notified of the costs as fixed by the formalities officer acting for the opposition division.

For an explanation of the duties entrusted to the formalities officers, see D‑II, 7.

Question 9

2.2 Appeal against the fixing of costs by the opposition division

Answer 9

The communication in which the formalities officer has fixed the costs may be reviewed if requested by one of the parties to the proceedings. The opposition division will then issue an appealable decision.

The request for such a decision, stating the reasons on which it is based, must be filed with the EPO in writing within one month after the date of notification of the communication in which the costs have been fixed. This request is not deemed to be filed until the fee for the request of a decision to be issued by the opposition division on the costs as fixed has been paid at the rate prescribed in the Rules relating to Fees under the EPC.

Rule 88(3)

The opposition division will take a decision on the request without oral proceedings.

Rule 88(4)

This final decision by the opposition division can be appealed by each party adversely affected. The appeal will only be admissible if the amount fixed exceeds the appeal fee.

Question 10

3. Enforcement of the fixing of costs

Answer 10

Any final decision of the EPO fixing the amount of costs must be dealt with, for the purpose of enforcement in the contracting states, in the same way as a final decision given by a civil court of the state in the territory of which enforcement is to be carried out. Verification of any such decision must be limited to its authenticity.

“Decision” as referred to above also covers the final fixing of costs by the opposition division.

Question 11

1. Introduction (CH10)

Answer 11

The limitation and revocation procedures are centralised ex parte procedures at the level of the EPO which allow the patent proprietor either to have the claims of the granted patent limited or to have the whole patent revoked for all the designated states. More particularly, the limitation procedure offers an opportunity to obtain a limitation of a European patent in a short and straightforward procedure.

Unlike in the opposition procedure, there is no restriction on the period between the grant of the patent and the filing of the request. Accordingly, the request can be filed at any time after grant, after opposition proceedings, or even after expiry of the patent.

The examining division is competent to decide on requests for limitation and revocation. However, certain aspects of this procedure are entrusted to formalities officers (see decisions of the President of the EPO dated 12 December 2013, OJ EPO 2014, A6, and 23 November 2015, OJ EPO 2015, A104).

Question 12

2. Examination for deficiencies in the request

Question 13

2.1 Deficiencies which lead to the request being deemed not to have been filed

Answer 13

On receipt of a request for revocation or limitation of a patent, the formalities examiner will examine whether:

(i)
the request is filed with the EPO (Art. 105a(1))

(ii)
opposition proceedings in respect of the patent are not pending at the time of filing the request (Art. 105a(2) and Rule 93(1))

(iii)
the relevant fee is paid (Art. 105a(1) and Art. 2(1), item 10a, RFees)

(iv)
where the request is filed in a language according to Art. 14(4), the translation has been filed in due time (Rule 6(2))

(v)
where the requester is required by Art. 133(2) to appoint a representative, this was done in due time (Rule 152 (3) and (6)).

If any of these requirements are not met, the request is deemed not to have been filed. This finding is notified to the requester (Art. 119), and the fee is refunded.

Otherwise, the request is considered to have been filed, and the limitation/revocation procedure commences.

Question 14

2.2 Deficiencies which, if not remedied, lead to the request being rejected as inadmissible

Answer 14

The formalities officer will furthermore examine whether:

(i)
the request is filed in writing (Rule 92(1))

(ii)
the request includes the particulars of the requester required by Rule 92(2)(a), referring to Rule 41(2)(c)

(iii)
the request indicates in which contracting states the requester is the patent proprietor (Rule 92(2)(a))

(iv)
the request indicates the number of the patent to be limited or revoked (Rule 92(2)(b))

(v)
the request indicates in which contracting states the patent has taken effect, even if in the meantime it has lapsed in one or more of those contracting states (Rule 92(2)(b))

(vi)
in cases (iii) and (v), and if the requester is not the patent proprietor for all these contracting states, the requester provides the names and addresses of the other patent proprietors, and evidence of entitlement to act on their behalf (Rule 92(2)(c)); due to the retroactive effect of a limitation/revocation (Art. 68), such evidence is required also in the case where the patent has lapsed in one or more of the contracting states referred to under (v) in the meantime. Note that in the case of joint patent proprietors, whether for the same or different contracting states, the requirements of Rule 151 for appointment of a common representative also apply in the limitation or revocation procedure (see A‑VIII, 1.3)

(vii)
where limitation is sought, the request includes the complete version of the amended claims (and of the description and drawings where applicable) (Rule 92(2)(d))

(viii)
if the requester has appointed a representative, the particulars according to Rule 41(2)(d) (Rule 92(2)(e)) have been filed.

Rule 92

If any of the above requirements are not met, the requester is invited to correct the deficiencies within a period to be specified.

If the deficiencies are not corrected within this period, the request is to be rejected as inadmissible. This decision is notified to the requester (Art. 119). Re-establishment of rights under Art. 122 is, however, available. The decision rejecting the request is open to appeal (Art. 106(1)).

Otherwise, the request is deemed admissible.

Question 15

3. Decision on request for revocation

Answer 15

If the request is for revocation, and is admissible, the examining division will revoke the patent and communicate this to the requester (Art. 105b(2) and Rule 95(1)). The decision takes effect on the date on which it is published in the Bulletin (Art. 105b(3)). In accordance with Art. 68, the effect of the decision is that the patent is revoked ab initio, conferring no rights under Art. 64 or 67. As stated in Art. 105b(3), the decision applies to all contracting states in respect of which the patent was granted. It is not possible for the patent to be revoked only for some contracting states, and not for others.

Question 16

4. Substantive examination (limitation)

Question 17

4.1 Department responsible

Answer 17

If a request for limitation is deemed to be admissible, then the file will be forwarded to the examining division, as the department responsible for the examination of the request.

Question 18

4.2 Basis for the examination

Answer 18

The basis for the examination is the patent as granted or amended in opposition or limitation proceedings (Rule 90). In cases in which there have already been both opposition and limitation procedures, or more than one limitation procedure, the basis for the examination is the patent as amended in the most recent of those procedures.

The requester has the option of providing information (with the request, or later in the procedure) as to why the request is allowable, and/or as to the purpose behind the request, but there is no obligation to do so. The purpose underlying the request is, however, of no relevance to the question whether it is allowable.

Question 19

4.3 Scope of the examination

Answer 19

The scope of the examination is limited by Rule 95(2). The examining division is required to decide only whether the amended claims of the request constitute a limitation with respect to the claims as granted or amended (i.e. those referred to in D‑X, 4.2), and whether the amended claims comply with the requirements of Art. 84 and Art. 123(2) and (3).

The term “limitation” is to be interpreted as meaning a reduction in the extent of protection conferred by the claims. Mere clarifications or changes made to protect a different subject (“aliud”) are not to be considered as limitations.

More particularly, the limitation of a dependent claim only, without any independent claim being limited, is acceptable. However, it is not permissible to introduce non-limiting amendments in the description or in the claims that are not a consequence of the limitation of the claims (for example tidying up unclear claims, making amendments to improve the patent or cosmetic changes). Likewise, adding dependent claims in limitation is not permissible if not directly caused by the limitation introduced in the claims.

Amendments in a claim leading to a scope of protection which is smaller but falls partly outside the extent of protection conferred by the claim previously on file must be dealt with cautiously. Even if the amendment constitutes a limitation, such a claim would generally contravene Art. 123(3) (see also H‑V, 7, for Art. 123(3) in the case of a change of category of a claim).

Rule 95(2)

For interpretation of Art. 84 and Art. 123(2), see F‑IV, 4 and H‑IV, 5.4. The description and drawings are used to interpret the claims in accordance with Art. 69(1) and its Protocol on Interpretation. Amendments made to these parts might therefore introduce matter contrary to Art. 123(3) (see H‑IV, 3.1 and 3.3).

Art. 69(1)

For the admissibility of a request for correction under Rule 139 of the documents making up the patent, see H‑VI, 2.1.1.

The filing of auxiliary requests together with a main request is possible (see H‑III, 3).

Question 20

4.4 Further stages of the examination

Answer 20

If the examination under D‑X, 4.3 above leads to the conclusion that the request is allowable, then the next stage of the procedure – the establishment of the formal requirements for limitation as described under D‑X, 5 can begin. Otherwise, in accordance with Rule 95(2), a communication must be sent to the requester identifying the deficiencies and giving the opportunity to correct them within a period to be specified. The normal period is two months (Rule 132(2)). It is, in principle, extendable, but only under exceptional circumstances.

The division may not adapt the description of its own motion (see D‑X, 5). In the case of discrepancy between the claims and the description, an objection will always be raised.

If the requester responds in due time in a manner such that no objections remain, then the procedure continues as in D‑X, 5.

Rule 95(2) provides for only one opportunity to make amendments during limitation. However, if the response to the communication under Rule 95(2) overcomes the objections raised in that communication, but gives rise to new objections, the fundamental principle of the right to be heard under Art. 113(1) will normally make a further communication necessary in order to communicate the new objections to the requester before the decision to reject the request for limitation is issued (see D‑X, 6). Normally, no further amendments may be made in reply to that communication.

Rule 95(2) specifies that the examining division must give the requester one opportunity to correct the deficiencies. However, any request for oral proceedings according to Art. 116 will be granted if the division does not consider the request for limitation to be allowable. No further amendments may be submitted during oral proceedings if the opportunity to make amendments has already been taken.

Question 21

4.5 Third-party observations during the examination

Answer 21

Art. 115 explicitly covers all proceedings before the EPO, not just pre-grant proceedings. Accordingly, its provisions also apply in principle to revocation and limitation proceedings. Patentability under Art. 115 is to be interpreted in a broader sense, so that issues relating to Art. 84 and Art. 123(2) may also be taken into consideration. Requesters could, when responding to an invitation under Rule 95(2), introduce further restrictions intended to address such observations. If they wish to do this, and no invitation under Rule 95(2) is issued, their only option is to file a further request for limitation.

Question 22

5. Formal procedure for limitation when the request is allowable

Answer 22

If the request for limitation is allowable, then according to Rule 95(3) the examining division must communicate this to the requesters and invite them to pay the prescribed fee and file translations of the amended claims into the other two official languages within a period of three months.

The nature of the communication under Rule 95(3) inviting the requester to pay the prescribed fee and file translations of the claims is different from the communication of the intention to grant during examination proceedings under Rule 71(3). During limitation, the text filed by the requester is deemed to be approved, whereas at this stage in examination the text is a version proposed to the applicants and subject to their approval.

Once the communication under Rule 95(3) is received, the requester can only pay the fee and file the translations or have the request rejected for failure to do so. Therefore, the examining division may not, with the communication under Rule 95(3), make amendments of its own motion to the claims of a request for limitation in order to render them allowable or adapt the description of its own motion to the limited claim(s). The provisions of Art. 113 would not be met, since the requester does not have an opportunity to contest or comment on the amendments made.

As in opposition proceedings, the requester benefits from a two-month period of grace for reply with payment of a surcharge (Art. 2(1), item 9, RFees). Reestablishment of rights is available.

Rule 95(3)
Art. 2(1), item 8 and item 9, RFees

If the requester pays the fee and files the required translations in due time, the examining division will decide to limit the patent (Art. 105b(2) and Rule 95(3), last sentence). This takes effect on the date on which the mention of the decision is published in the Bulletin.

Art. 105b(2) and (3)

As soon as possible after this, the amended specification will be published by the EPO. The form of publication of the amended patent specification is defined in Rule 96, Rule 73(2) and (3) and Rule 74. The procedure for this is the same as in opposition proceedings.

Art. 105c

As for revocation (see D‑X, 3), the effect of the decision to limit the patent is that the patent is limited ab initio.

Question 23

6. Rejection of the request

Answer 23

If:

(i)
the requester does not respond in due time to the invitation under Rule 95(2) (see D‑X, 4.4 above); or

(ii)
the requester responds in due time, but the request is still not allowable; or

(iii)
the requester fails to pay the fee(s) and file the translation according to Rule 95(3) (see D‑X, 5 above),

then the examining division will reject the request (Art. 105b(2), last sentence and Rule 95(4)), provided the requirements of Art. 113(1) are met (see D‑X, 4.4).

The decision to reject the request will be notified in accordance with Art. 119 to the requester.

In case (ii), the decision is a reasoned decision taken by the examining division and is subject to appeal.

Question 24

7. Relation to opposition proceedings

Question 25

7.1 Precedence of opposition proceedings

Answer 25

The case in which opposition proceedings are already pending when the request for revocation or limitation is filed has been mentioned in D‑X, 2.1. In the opposite case, i.e. where an opposition is filed while revocation or limitation proceedings are pending, the procedure depends on whether the pending proceedings relate to a request for revocation or for limitation.

Rule 93(1)

According to Rule 93(2), if the pending proceedings relate to a request for limitation, the examining division will terminate those proceedings and order the reimbursement of the limitation fee. The limitation procedure is terminated on the day the decision on the limitation procedure is handed over to the internal EPO postal service. If the requester has already paid the fee referred to in Rule 95(3) (see D‑X, 5), this fee will also be refunded. The opposition procedure will then continue in the normal manner.

The decision to terminate the limitation proceedings is notified to the requester (Art. 119).

Rule 93(2) is restricted to limitation proceedings. Therefore, in the case of revocation proceedings, there is no precedence of opposition. Revocation proceedings continue after an opposition is filed, and the case proceeds to opposition only if the request for revocation is deemed not to have been filed, is rejected as inadmissible or is withdrawn. Otherwise, if the patent is revoked, the opponent(s) will be informed of this situation and the opposition proceedings will be terminated.

Question 26

7.2 Filing of opposition after decision on limitation

Answer 26

On rare occasions it may happen that the limitation procedure is finished before an opposition is filed within the nine-month period and the decision to limit has already been published in the European Patent Bulletin. In such cases the opponent does not benefit from a new nine-month period, since the opposition period runs only once from publication of the mention of the grant of the patent. Accordingly, the opponent will not have a full nine-month period to formulate the opposition for the patent as limited.

Question 27

8. Legal status of decisions

Answer 27

The decisions rejecting the request for limitation or revocation as either inadmissible or not allowable (see D‑X, 2 and 6) are open to appeal, as they are decisions of the examining division terminating a procedure. Accordingly, they are decisions listed as such in Art. 21(3)(a).

Question 28

9. Withdrawal of the request

Answer 28

In the absence of any provision to the contrary and in accordance with normal legal principles, the requester may withdraw the request for limitation or revocation at any time, provided that the request is still pending. In this case, however, the limitation or revocation fee will not be refunded.

Question 29

10. Different sets of claims

Answer 29

Art. 105b(3) specifies that the decision to limit or revoke will apply to the patent in all contracting states for which it has been granted. There is thus a single decision, covering all contracting states, but this decision may include different sets of claims for different contracting states, or determine that the limitation is in other ways different for different contracting states. Such situations could arise in two different sets of circumstances.

Question 30

10.1 Limitation results in the claims becoming different in different contracting states

Answer 30

The limitation could result in the claims becoming different in different contracting states if the requester wishes to restrict the claims with respect to one or more, but not all, contracting states in order to avoid conflict with national prior rights. Such different sets of claims can be allowed, provided that the substantive requirements are met for all sets for which the requester is seeking an amendment.

It follows from Rule 138 that a prerequisite for the introduction of different claims for different contracting states during the limitation procedure is that requesters inform the EPO of the existence of the national prior rights when filing the different sets of claims. If they file different sets of claims without informing the EPO of the national prior rights, then the request is to be refused under Art. 105b(3) and Rule 138.

Rule 138

For applications filed on or after 13.12.2007, different sets of claims can no longer be justified on the basis of prior art under Art. 54(3) (for transitional provisions, however, see D‑VII, 8).

Question 31

10.2 Limitation is different for different contracting states because the claims as granted were different for different contracting states

Answer 31

The limitation is different in different contracting states because the claims forming the basis of the limitation procedure were different in different contracting states. This situation would occur where the patent has different claims for different contracting states, e.g. because of national prior rights or prior art under Art. 54(3) (for patents granted before 13.12.2007 or for patents granted in respect of European patent applications pending at that time), or where under Art. 61 a partial transfer of rights has taken place (Rule 18(2)).

The requester might wish to apply a limitation already introduced for one or more contracting states to the other contracting states, or to bring the claims into line with each other for a different reason. If this results in a single set of claims for all contracting states, and the substantive requirements are met separately for each different set of original claims, then the request would be allowable.

Note that it would also be possible that the circumstances of this paragraph and paragraph D‑X, 10.1 coexist in a single request.

Question 32

11. Multiple requests

Answer 32

Rule 90 defines that the basis for the request can be the claims as amended in limitation proceedings, thus providing for multiple subsequent requests, i.e. a request for limitation or revocation following one or more earlier requests for limitation.