T 0930/92 (Ion beam processing) of 29.5.1995

Summary of Facts and Submissions

I. European patent No. 0 075 949 comprising eleven claims was granted to the respondent.

Claim 1 of this patent reads:

II. The appellant filed an opposition against the above European patent, citing the documents

III. The opposition division rejected the opposition, grounding its decision in substance as follows:

... Therefore, claim 1 involves an inventive step and, for the same reasons, so does claim 11.

IV. The opponent lodged an appeal against the decision of the opposition division, requesting that said decision be set aside, that the European patent be revoked and, subsidiarily, that oral proceedings be scheduled if the board intended to uphold the impugned decision.

In support of these requests, the appellant argued in substance as follows:

V. The respondent (proprietor of the patent) requested that the appeal be dismissed, that the patent in suit be maintained as granted and, subsidiarily, that oral proceedings be held.

The respondent's arguments, in so far as they do not repeat those of the opposition division, may be summarised as follows:

VI. The board summoned the parties to oral proceedings to be held on 19 October 1994, without issuing a communication pursuant to Article 11(2) RPBA.

VII. The respondent's representative appeared at the date and time fixed for the oral proceedings, accompanied by two employees of the respondent company, one being an inventor, and the other being a member of the respondent's patent department.

The appellant's representative did not appear and, in a telephone call made by the registrar of the board before the proceedings began, he stated that he would not attend the proceedings.

The Chairman opened the oral proceedings and stated that the board intended to dismiss the appeal and to maintain the patent as granted, and that no further submissions from either party concerning the substantive issue of patentability would be admissible.

The respondent's representative stated that a request for apportionment of costs would be filed in writing.

The Chairman stated that the appeal proceedings would be continued in writing with respect to the apportionment of costs, and closed the oral proceedings.

VIII. The respondent's written request for apportionment of costs was filed on 21 November 1994, and contains a request that the following costs which were incurred by the respondent should be awarded against the appellant:

Flight tickets for the two employees of the respondent company, Tokyo - Munich - Tokyo, (copies were enclosed): DEM 20927.20

Hotel expenses for the above two employees (a copy of the bill was enclosed) DEM 2812.20

Travel expenses for the above two employees Yokohama-Tokyo-Yokohama (estimated) DEM 300

Extra expenses for the above two employees for food during their stay (estimated) DEM 1400

Public transport for the above two employees within Munich and to and from the airport (estimated) DEM 50

Renting a video equipment DEM 57.50

Renumeration of the professional representative (1 attorney, 3 1/2 days) DEM 8750

Total: DEM 34296.90

In support of the above request, the respondent submitted essentially as follows:

Since the board came to a preliminary opinion on the written submissions that the appeal should be dismissed, no oral proceedings were necessary from the respondent's side. It is the duty of a party to inform the other party and the board if it does not intend to appear as summoned, in order to avoid unnecessary costs being incurred.

The appellant was informed by letter dated 29 July 1994 which was written in connection with fixing the date for oral proceedings that representatives of the patent proprietor's company would attend the oral proceedings, and it indicated in reply to the respondent (but not to the board) that the appellant might not attend the oral proceedings. However, such an indication was clearly too uncertain for the respondent to cease preparation for the oral proceedings.

The appellant therefore knew that the respondent's preparations for the oral proceedings in October 1994 would incur high costs, and had plenty of time to make up its mind whether or not to attend such proceedings, and if not, to inform the respondent and the board in good time in advance of 19 October 1994.

IX. The board invited the appellant to respond to this request for costs within two months. The appellant's reply was filed on 26 January 1995.

(1) The appellant submitted that the respondent's request for an award of costs should be rejected, essentially for the following reasons:

(a) According to Article 104(1) EPC, each party to opposition proceedings should bear its own costs, unless a different apportionment is ordered for reasons of equity. There are no reasons of equity in the present case to justify a different apportionment of costs.

In principle a party to opposition proceedings is free to choose whether or not to attend oral proceedings which have been arranged by an opposition division or a board of appeal, subject to the following exceptions:

(1) The first exception is when the parties can see that the oral proceedings have been arranged as a consequence of an auxiliary request of only one party. In such a case the party at whose request the oral proceedings have been arranged is obliged either to attend the oral proceedings or to notify the EPO in advance that it will not attend.

The present case is not such a case, because both parties had made an auxiliary request for oral proceedings so the oral proceedings had not been arranged specifically for either one of them. From the appellant's point of view the oral proceedings had not been arranged specifically following its auxiliary request.

(2) A second exception is when the opposition division or board of appeal has issued a communication accompanying the invitation to oral proceedings, which indicated a preliminary view against a particular party. In such a case that party is also obliged to notify its intention not to attend the oral proceedings in good time in advance of the appointed day.

In the present case no such communication was issued by the board of appeal.

Furthermore:

(3) Since about July 1993 invitations to oral proceedings from the EPO have been accompanied by a form entitled "Important information concerning oral proceedings" (Form 2043.2.07.93) which states inter alia that a party which does not wish to attend oral proceedings on the date appointed is requested to notify the EPO immediately, and in urgent cases to notify other parties as well. This form also states that costs incurred by other parties may be charged to a party which either fails to notify such parties of its non-attendance, or does not notify them in good time.

In the present case no such form was sent with the invitation to oral proceedings.

(b) The appellant also contested the extent of the costs claimed by the respondent, as not being justified in equity, for the following reasons:

(1) The Japan-based respondent is represented by a patent attorney based in Munich, who appeared alone at the oral proceedings before the opposition division. The patent proprietor had no proper reason to send its employees to the oral proceedings before the board of appeal in addition to the patent attorney, and it would be unfair to award costs in respect of the attendance of the two employees from Japan.

(2) Furthermore the costs of two employees travelling from Japan goes beyond the scale envisaged under Article 104 EPC.

(3) The length of the two employees' stay in Munich was also excessive for the preparation for oral proceedings.

(4) The preparations during three and a half days by the patent attorney were also excessively long.

X. The respondent replied to these contentions in a letter filed on 21 February 1995.

Reasons for the Decision

1. Inventive step

1.4 The appellant's submissions thus do not invalidate the conclusions of the opposition division, which are adopted by the board.

2. The grounds mentioned in Article 100(a) EPC consequently do not prejudice the maintenance of the patent in suit as granted to the respondent. The appeal is therefore dismissed.

3. Apportionment of costs: principles

3.1 Article 104(1) EPC provides that an opposition division or a board of appeal may order an apportionment of costs incurred in oral proceedings, in accordance with the Implementing Regulations, and "for reasons of equity".

3.2 Article 116(1) EPC states that "Oral proceedings shall take place ... at the request of any party to the proceedings ...", and Rule 71(1) EPC states that "The parties shall be summoned to oral proceedings provided for in Article 116 EPC". A summons is an authoritative call to attend at a specified time and place for a specific purpose, namely for holding the oral proceedings. By issuing such a summons, a board of appeal commits itself to holding oral proceedings at the specified time and place, as part of the related appeal proceedings. As a party to the appeal proceedings, a party which receives such a summons (whether or not it has requested oral proceedings pursuant to Article 116 EPC) has an equitable obligation either to appear at the oral proceedings at the specified time and place, or to notify the board as soon as it knows that it is not going to appear at such oral proceedings. This is the case whether or not that party has itself requested oral proceedings, and whether or not a communication has accompanied the summons to oral proceedings.

If a party only knows shortly before the specified time for the oral proceedings that it is not going to attend, such equitable obligation extends also to informing any other parties to the appeal proceedings of such non-attendance. Even then, a party which only decides at such a late stage not to attend oral proceedings runs the risk of an apportionment of costs to compensate for the unnecessary incurring of costs by other parties.

Thus as a matter of legal principle, the board does not accept the submissions of the appellant set out in paragraph IX above, to the effect that a party is in general free to choose whether or not to attend oral proceedings to which it has been summoned, without giving notice to the board and other parties if it chooses not to attend, subject only to the particular exceptions which are there set out. On the contrary, as explained above, there is a general equitable obligation upon every party which is summoned to oral proceedings to inform at least the board as soon as it knows that it will not attend as summoned, in order that the board can then decide the proper future procedural course of the proceedings.

Furthermore, the board does not accept the appellant's contentions to the effect that a party is only obliged to notify the board of its non-appearance at oral proceedings if it can see from the course of the proceedings that such oral proceedings have been arranged as a result of its request for such proceedings. The control of the appeal procedure lies with the board of appeal, not with the parties to the proceedings. Consequently, the board of appeal should always be informed if a party does not intend to appear at oral proceedings.

3.3 If a party duly notifies the board that it will not attend oral proceedings in accordance with a summons, the procedural consequences will vary, depending in particular upon which parties to the appeal proceedings have requested oral proceedings under Article 116 EPC, and also depending upon the particular circumstances of the case.

In a case such as the present, namely opposition appeal proceedings involving two parties, the patent proprietor (respondent) and the opponent (appellant), in which both parties have requested oral proceedings on an auxiliary basis, clearly the board cannot decide the case in favour of either party without first appointing oral proceedings. When issuing the summons to oral proceedings in such a case in accordance with Article 11(2) of the Rules of Procedure of the Boards of Appeal (OJ EPO 1983, 7) the board may (or may not) send a communication accompanying the summons, and it may or may not, in accordance with Article 12 RPBA, include in such a communication a possible appreciation of substantive or legal matters which arise in the case.

Whether or not a communication under Article 11(2) RPBA has been issued, if one of the parties subsequently (but in advance of the day appointed for the oral proceedings) withdraws its request for oral proceedings (or states that it will not attend the oral proceedings, which is normally considered as equivalent to a withdrawal of the request for oral proceedings, see decision T 3/90, OJ EPO 1992, 737), from the point of view of the board of appeal it then becomes procedurally appropriate to review the procedural situation and to decide whether or not the oral proceedings should still take place. If, at that stage in the procedure and at that point in time, having regard to the written submissions of both parties on file, the board intends to decide the case in favour of the party which has withdrawn its request for oral proceedings, it is then still necessary to hold the oral proceedings having regard to the outstanding auxiliary request of the other party. On the other hand, if at that point in time, the board intends to decide the case in favour of the party whose auxiliary request for oral proceedings is still outstanding, the proper procedural course would then be for the board to issue a decision in favour of that party without holding any oral proceedings.

3.4 In the circumstances of the present case, in which the appellant failed to notify the board in advance of the time appointed for oral proceedings that it would not attend such proceedings, the board was unable to carry out such a review of the procedural situation. If the appellant had notified the board in good time before the day appointed for the oral proceedings that it would not attend such oral proceedings, the board would have been able to review the case having regard to the changed procedural situation, and would then have reached the conclusion that it in fact reached at the oral hearing, namely that it intended to decide the case in accordance with the respondent's request to dismiss the appeal. Since the respondent had requested oral proceedings only in case a decision to dismiss the appeal could not be made having regard to the written submissions of the parties, the board would then have been able to cancel the oral proceedings.

It follows that by failing to notify the board in advance of the hearing that it would not attend the hearing, the appellant was directly responsible for the unnecessary incurring of costs by the respondent in preparing for and attending the oral hearing.

In the board's judgment, therefore, for reasons of equity and in accordance with Article 104(1) EPC, in the circumstances of the present case an apportionment of costs in favour of the respondent will be ordered.

3.5 Apart from the fact that the appellant's failure to inform anybody of its intention not to appear at the oral proceedings caused unnecessary costs to be incurred by the respondent, the board would also draw attention to the inconvenience and waste of time caused to the board. If a party which has been duly summoned to oral proceedings fails to appear as summoned, in the absence of any prior notification, before commencing oral proceedings at the appointed time, a board will normally feel equitably and morally obliged to make enquiries by telephone to check whether the non-appearing party is known to be on its way and may have been delayed while travelling. Such enquiries were carried out in the present case.

3.6 In the board's view, the sending or otherwise by the EPO of a form such as Form 2043.2.07.93 accompanying the summons to oral proceedings (see paragraph IX(a)(3) above) is irrelevant to the question whether an apportionment of costs should be ordered having regard to the relevant equitable principles as set out above. Such principles are applicable whether or not such a form is sent. The sending of such a form is a mere "courtesy service", not required by the EPC.

3.7 Although the legal principles discussed above have been considered in the context of appeal proceedings, it will be apparent that such principles are equally applicable mutatis mutandis in proceedings before the opposition divisions.

4. Apportionment of costs: fixing the amount

4.1 Although Article 104(2) EPC provides that "On request, the registry of the opposition division shall fix the amount of the costs to be paid ...", in the board's view this procedural option is clearly inappropriate in a case such as the present.

Rule 63(1) EPC provides that an apportionment of costs "shall only take into consideration the expenses necessary to assure proper protection of the rights involved". Furthermore, the costs "shall include the remuneration of the representatives of the parties".

4.2 In paragraph 22 of a notice entitled "Opposition procedure in the EPO" (OJ EPO 1989, 417), which was issued by the EPO in connection with proceedings before the opposition divisions, it is stated that "If a party fails to appear, without adequate excuse, at oral proceedings arranged at his request, he bears the full costs incurred by the other party, provided these are reasonable in the circumstances". The board endorses this statement in the context of appeal proceedings, and considers that the principles underlying this statement are applicable in a case such as the present, where oral proceedings were arranged as a result of requests by both parties, but would not have been necessary if the party which in fact failed to appear had withdrawn its request for oral proceedings in good time before the day appointed for such proceedings.

4.3 The further question to be considered by the board is thus whether the expenses which have been claimed by the respondent were "necessary to assure proper protection of the rights involved", and were reasonable in the circumstances of the case. In support of this claim, the respondent has explained why the subject-matter of the case is of considerable commercial importance to him. This is not contested by the appellant, although it has submitted that the respondent's claim is excessively high.

Having regard to Article 133(2) EPC, since the respondent company does not have either its residence or its principal place of business within one of the contracting states, it is obliged to be represented in proceedings under the EPC by a professional representative.

In the board's view, the costs of remuneration of the respondent's professional representative in preparing for and attending the oral proceedings during three and a half days were clearly necessary to assure proper protection of the rights involved, and are reasonable, having regard to the nature of the subject-matter of the case (ie DEM 8 750).

Furthermore, during such preparation and attendance at the oral proceedings, in the board's view it was also necessary to assure proper protection of the respondent's rights for at least one member of the respondent company to be present for the purpose of instructing the professional representative both before and during the oral proceedings. Accordingly, in the board's view the claimed costs for one person travelling from Yokahama to Munich and back were also reasonable in the circumstances (ie DEM 10 500). Similarly, the claimed costs of one person staying in a hotel in Munich (DEM 1 400), and some minor incidental expenses are also reasonable (DEM 100).

The board does not consider that the other costs claimed were "necessary to assure proper protection of the rights involved".

4.4 According to Rule 63(2) final sentence, EPC, "Costs may be fixed once their credibility is established". The board accepts the credibility of the costs claimed by the respondent. The costs which have been claimed have been supported by appropriate evidence. The respondent has confirmed that during the three and a half days which are the subject of the claim, this was the only case discussed with the representative.

In the board's judgment, therefore, for reasons of equity the appellant shall pay the respondent by way of apportionment of costs the sum of DEM (8 750 + 10 500 + 1 400 + 100), ie DEM 20 750.

ORDER

For these reasons it is decided that:

1. The appeal is dismissed.

2. The appellant shall pay the respondent the sum of DEM 20 750 by way of apportionment of costs.