Key points
- "With its letter dated 24 November 2022, the patent proprietor (respondent) stated that it no longer approved the text in which the patent had been granted and would not submit an amended text. It also withdrew all auxiliary requests filed during appeal proceedings."
- "In the morning of 29 November 2022, the board issued its decision revoking the patent in the absence of a text agreed by the respondent (Article 113(2) EPC). The decision was authenticated at 09.20 hrs CET by the Chairwoman and at 09.57 hrs by the Registrar and sent to the postal service for dispatch at 10.01 hrs."
- "By letter dated 29 November 2022, filed electronically and received at the EPO at 14.55 hrs CET, appellant 2 requested a partial reimbursement of the appeal fee under Rule 103(3)(a) EPC and apportionment of costs."
- "the board therefore considered the issue of whether, in light of decision G 12/91 (OJ EPO 1994, 285), appellant 2's request for apportionment of costs, which was filed on the day of completion of the internal decision-making process for the decision of 29 November 2022, was submitted in time for it to be considered by the board. The board concluded that the completion of the decision-making process within the meaning of decision G 12/91 had to be determined with reference to a date and not an hour or an exact time on a date. Consequently, appellant 2's request was filed after the decision-making process had been completed."
- "the board also questioned whether decision G 12/91 was concerned with a decision as to substance but not with a situation as in the current case in which appeal proceedings are terminated without a decision. Indeed, under the established case law, a withdrawal of appeal terminates the proceedings on the merits at once (without decision as to substance), but the board still has the power to decide on ancillary questions such as the reimbursement of the appeal fee"
- "it could be argued that the decision of 29 November 2022 brought the appeal proceedings to a close for the substantive merits of the appeals ... while leaving ancillary questions like costs open to a decision. Consequently, the board would have the power to decide on the request for reimbursement of the appeal fee and for apportionment of costs filed after the completion of the internal decision-making process."
- " It can be left open whether and, if so, to what extent legal certainty imposes limitations as to the admissibility of a request for apportionment of costs filed after termination of the appeal proceedings (in line with the approach taken in T 1556/14 of 15 October 2020) as the current request is not allowable for the following reasons."
- The Board issues a preliminary opinion on 09.11.2022, in advance of the oral proceedings scheduled for 01.12.2022 (!) (summons 18.01.2022). The proprietor then disapproved the text of the patent on 29.11.2023. The Board sees no abuse of procedure in this action of the proprietor.
- As a comment Rule 115 EPC only specifics a minimum period of 2 months notice for the summons, Art. 15(1) RPBA specifies a period of four months for the summons, and Art. 15(1) sixth sentence RPBA only specifies that the Board " shall endeavour to issue the [preliminary opinion] at least four months in advance of the date of the oral proceedings". Apparently, sometimes the preliminary opinion is issued less than one month in advance.
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/2023/08/t-148419-request-after-decision.html
