Key points
- "The opponent's appeal is against the opposition division's decision rejecting the opposition to European patent No. 2 296 858 ("the patent") and ordering the patent proprietor to pay 100% of the costs of the oral proceedings scheduled for 23 February 2016 to the opponent under Article 104(1) EPC. With its notice of appeal dated 14 September 2016, the appellant (opponent) appealed against the decision of the opposition division, except in so far as it relates to costs."
- "In its reply dated 3 April 2017, the respondent (patent proprietor) requested, inter alia, that the decision on costs be included in the subject of the appeal and that the discussion on this matter be reopened."
- The Board considers the OD's decision on the costs to be outside the scope of the appeal.
- "The meaning of the generally-recognised procedural principle of free party disposition is that the appeal cannot extend to issues that, in view of the notice of appeal, the appellant themselves did not wish to be a subject of the appeal, nor can the extent of the rights be decided beyond the extent requested (see also decision T 689/09, point 1.7 of the Reasons)."
- "In the case in hand, the notice of appeal clearly shows that the appellant did not appeal against the opposition division's decision on the apportionment of costs. Nor does the statement of grounds of appeal refer to the issue of the apportionment of costs. Therefore the opposition division's decision in this respect is not the subject of the present appeal."
- "In view of the above, the issue of the apportionment of costs is a legal issue which may not be dealt with and decided on in the appeal proceedings, since it is not the subject of the present appeal. For that reason alone, the respondent's requests regarding the decision on the apportionment of costs are not admissible.'
- "the general considerations of [decisions T 753/92 and T 762/96 ] are applicable here mutatis mutandis since, if the respondent had lodged an appeal against the opposition division's decision on apportionment of costs, the appeal, with the apportionment of costs as its sole subject, would have been inadmissible under Article 106(3) and Rule 97(1) EPC. The respondent is only a party to the proceedings under Article 107, second sentence, EPC, and does not have the right to file a "cross-appeal" without limit of time and, unlike the rights the respondent would have as appellant, its requests are therefore subject to restrictions (see also decision G 9/92, OJ EPO 1994, 875, point 16 of the Reasons)."
- As a comment, the provision of Rule 97(1) "The apportionment of costs of opposition proceedings cannot be the sole subject of an appeal" is simply a choice of the legislator to limit the right to appeal and must be respected.
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/09/t-219716-no-appellate-review-of-cost.html
