EPLAW PATENT BLOG

EPO – No-show at oral proceedings before Board of Appeal in order to save costs may turn out to be expensive

Posted: March 31st, 2010

EPO, Technical Board of Appeal 3.2.03, 18 November 2009, Decision No. T 212/07, not to be published in OJ, – Ancon CCL Limited (appellant/opponent) v. Normteq B.V. (respondent/patentee)

In a considerable number of cases, parties summoned to oral proceedings before the EPO do not appear. This is not only detrimental to the efficiency of the work of the EPO but may also cause superfluous costs for the adversary. Whereas, as a rule, each party has to bear its own costs, the departments of the EPO may, for reasons of equity order a different apportionment of costs.

In the reported case, the Board of Appeal had summoned the parties some three months before the date fixed for oral proceedings with a communication which was generally negative with regard to the opponent’s arguments on the issue of lack of novelty. The opponent abstained from commenting in substance and informed the Board one week before the appointed oral proceedings that it would not be attending oral proceedings in view of the high costs involved. The Board cancelled the oral proceedings and the patentee requested an apportionment of costs to cover the non-refundable travel and lodging costs of its representative and of the preparation costs for the oral proceedings.

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The Board confirmed previous case law by stating that a party has an obligation either to appear at the oral proceedings or to notify the Board as soon as it knows that it is not going to do so. In the absence of any comments from the opponent on the request for apportionment of costs, the Board had no direct evidence about when the opponent decided not to attend the oral proceedings. However, they accepted the patentee’s submission that the costs of attending had not suddenly escalated and that the opponent would have been aware of the costs involved when originally making its request for oral proceedings. On the balance of probabilities, they considered that the opponent had decided at the latest about one month before the fixed date that it was not worth its while to incur the expense of coming. If the Board had been informed in good time, then, again on the balance of probabilities, they would have cancelled the date since nothing had happened to change their preliminary view on the appeal and they were in a position to dismiss the appeal without hearing the patentee further in oral proceedings. In this case, none of the costs claimed by the patentee would have been incurred. An order in respect of the sums claimed was made, i.e. € 406 for travelling and lodging and £ 1280 for the attorney’s costs chargeable to his client for the preparation of the oral proceedings.

The lesson to be learned is that in inter partes proceedings it is not good enough to inform the EPO a few working days before the oral proceedings of the intention not to attend, a conclusion which might have been drawn from some earlier decisions. Rather, the summons itself and any accompanying communication should give reason to make the decision within reasonable time whether or not to attend and to inform the EPO accordingly. It goes without saying that the costs to be fixed may be much higher than in the reported decision depending on the circumstances of the case (travelling distance, number of persons attending, preparing evidence etc).

Read the decision (in English) here.

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