Opposition guidelines CH 9 and 10 Flashcards
Chapter IX – Costs
- Charging of costs
1.1 General principle
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).
1.2 Decisions on the apportionment of costs
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.
1.3 Costs to be taken into consideration
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.
1.4 Principle of equity
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.
- Procedure for the fixing of costs
2.1 Fixing of costs by the opposition division
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.
2.2 Appeal against the fixing of costs by the opposition division
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.
- Enforcement of the fixing of costs
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.
- Introduction (CH10)
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).
- Examination for deficiencies in the request
2.1 Deficiencies which lead to the request being deemed not to have been filed
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.
2.2 Deficiencies which, if not remedied, lead to the request being rejected as inadmissible
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.
- Decision on request for revocation
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.