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Case law 4 jan 2022

Het verbergen van de CPA tijdens het onderzoek is geen misbruik van procedure

-Dit artikel is alleen in het Engels beschikbaar - The opponent filed an appeal against the decision of the opposition division to maintain the patent in amended form with the request that all costs of the opposition proceedings to be apportioned to the patentee according to Art. 104(1) EPC, because of an alleged abuse of the Examination Proceedings. The patentee had not cited its own relevant prior art in the background of the patent, thereby, according to the opponent, deliberately withholding it from the Examining Division. The Board rejects the request, indicating that a) Art. 104(1) EPC should be applied for abuse occurring during inter-partes proceedings (and not during examination); and b) R. 42(1)(b) EPC does not provide an obligation to the applicant to cite all prior art documents as clear from the word “preferably”.
The Board agreed with the appellant with respect to the obviousness of the claims, but refused the request for a different apportionment of costs

Claim 1 of the patent relates to a barbecue. In opposition, the opponent filed an episode of a television programme showing a demonstration of a barbecue of the patentee before the filing date of the patent (D3). According to the opponent, claim 1 was obvious in view of D3 in combination with common general knowledge.

In appeal, the opponent (appellant) argued that the claims as amended in opposition do not meet the requirement of inventive step in view of D3 together with common general knowledge. In addition, the opponent argued that the patentee had illegitimately withheld the closest prior art (D3) during examination proceedings, which constitutes abuse of procedure. According to the opponent, the patentee should have mentioned the video during the examination phase. Withholding D3 is what has ultimately led to the opposition since the scope of the patent as granted was too broad. Thus, the opponent requested all costs to be apportioned to the patentee.

More precisely, the opponent argued that the patentee had deliberately violated R. 42(1)(b) EPC, according to which the applicant shall indicate in the description the background art which, as far as is known to the applicant, can be regarded as useful to understand the invention.

The Board agreed with the appellant with respect to the obviousness of the claims, but refused the request for a different apportionment of costs. According to the Board,  Art. 104(1) EPC establishes that in principle, each party should bear its own costs. Art. 104(1) EPC second sentence, establishes that the Opposition Division may order a different apportionment of costs for reasons of equity. However, this provision seems to leave open which situations should be considered for a different apportionment of costs.

It is established case law that this is applicable in cases of abuse of procedure. However, the Opposition Division considered that in the present case there was no abuse of procedure.

The Board considered that the allegation of abuse of procedure related to a fact that occurred before and not during the opposition proceedings, while the request for a different apportionment of costs related to the costs of opposition and appeal proceedings. It is the Board’s view that it is at least questionable whether Art. 104(1) EPC should be given such a broad scope.

So far, the Boards have only dealt with a different apportionment of costs because of acts committed (or omitted) during the opposition proceedings. It is also clear from the case law that the costs considered to be apportionable must have been directly caused by the objectionable conduct of the other party. In the Boards view, the case law reflects the fact that a different apportionment of costs can be ordered against both patent proprietors and opponents, and because of this symmetry, it is also reasonable to limit the scope of Art. 104(1) EPC to such inter-partes proceedings. Hence in the present case, a different apportionment of costs would not be appropriate. 

In addition, the Board discussed the requirements of R. 42(1)(b) EPC. In the English and French version of the Rule, the word “preferably” (or “de preference”) is included:

“The description shall: … (b) indicate the background art which, as far as is known to the applicant, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art;”

Hence this Rule grants a certain amount of freedom to an applicant to also leave out certain prior art documents. This freedom of the applicant is also supported by the provisions of Art. 113(2) EPC.  No formal sanctions apply under the EPC if the applicant does not cite a document, apart from the possibility that the Examining Division rejects the application. The fact that the Examining Division does not find a relevant piece of prior art during the search does not oblige the Applicant to bring it to their attention.

Finally, the Board points out that it does not appear that there is a causal link between the costs of the opposition and the alleged abuse. The patent was maintained in amended form in opposition, whereas the opponent requested a complete revocation, as evidenced by its appeal. Hence also when a narrower patent would have been granted by the Examining Division, it cannot be excluded that the opponent would not have filed an opposition.

The Board therefore refused the request for a different apportionment of costs. 

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EPO Case Law Team

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