Inactive patentee doesn't incur costs in EPO opposition

In Case T 0784/14 Nutritional Formulation with High Energy Content/N.V. NUTRICIA, 21 July 2015, a Technical Board of Appeal of the.European Patent Office refused to grant the opponents (Fresenius, Abbott and Nestec) a portion of their costs against Nutricia, the patent owner, who took no active part in the opposition proceedings.

According to the Board, while the work on the admissibility of the appeal and claim requests probably became necessary due to the way Nutricia (the appellant in these proceedings) conducted itself in the course of the proceedings, that did not of itself justify an apportionment of costs for four reasons:

(1) the European Patent Convention did not compel a patent proprietor to take an active part in opposition proceedings; nor was a proprietor was not precluded from filing an appeal against an adverse decision of the Opposition Division;
(2) remaining inactive during opposition proceedings and filing new claim requests only at the appeal stage is not in itself an abuse of procedure that would justify an apportionment of costs;
(3) if Nutricia had participated actively in the opposition proceedings other issues might have arisen, which might have caused the opponents more work and expenses;
(4) Nutricia's timely withdrawal of its approval of the text had actually prevented the opponents incurring even more costs.

It was not therefore equitable to apportion costs.

A cynic might take the view that, in light of items (3) and (4) above, Nutricia had done the opponents such a big favour that it might be fairer for them to pay Nutricia ...

T1071/06 - Jilted in Munich

As a rule, each party bears its costs in EPO opposition proceedings and the subsequent appeal. However, the opposition division or the Board of Appeal may order a different apportionment for reasons of equity (Art. 104(1) EPC), which happens very rarely.

In the case T1071/06 the board had issued a preliminary opinion indicating that a document D0 would be considered as the closest prior art and the preliminary view was that the claims were inventive over D0. In response to this, frustrating punch, the opponent/appellant indicated one month after receipt of the summons that it would not attend to the oral proceedings.

The patentee/defendant attended to the oral proceedings alone and requested to impose the costs for the preparation and attendance to the oral proceedings to the appellant because the remaining issues could have been resolved in writing if only the opponent/appellant had given up earlier.

The board found that the appellant's behaviour was not abusive but that it is fair to grant each party the right to re-consider its case after receipt of the preliminary opinion. Besides, the oral proceedings would have been expedient in any case to resolve the remaining issues.