In this decision, the Board refused a request from the opponent to appoint the entire costs of the opposition proceedings to the patentee on the basis of Art. 104(1) EPC because of the inequitable conduct of the patentee when filing the application, making the filing of the opposition necessary.
Facts underlying the decision
The patent in suit relates to a barbecue equipment. A very similar barbecue equipment was presented by the patentee on TV before the priority date, and this broadcast was considered in the opposition proceedings as the closest prior art on the basis of which the patent was revoked. This TV broadcast was neither mentioned in the application nor at anytime during the examination proceedings contrary to Rule 42(1)b) EPC.
The Board had doubts that Art. 104 EPC could be interpreted in such a way that the costs of the entire opposition proceedings could be appointed to one party. On the contrary, the Board was of the opinion that Art 104 EPC could be applied only to certain procedural aspects during the opposition proceedings, any act in the opposition proceedings not leading to the appointment of costs according to Art. 104 EPC.
The more interesting aspect of the decision is that the Board did not consider the violation of Rule 42(1)b) an abuse of proceedings that could or should be punished. The board came to the conclusion that even though Rule 42(1)b) EPC formally obliges the applicant to cite the prior art known to her/him, the violation of this rule has no consequences because of the word “preferably”, meaning that no punishment for the violation of this rule is envisaged. Because of the grounds above the Board refused to appoint the costs of the opposition proceedings to the patentee.
It remains to be seen whether this decision will be confirmed by future decisions of the Boards of Appeal. Should this be the case, Rule 42(1)b) that requires that the prior art known to the applicant is cited in the description should be seen only as a proposal to make the examination proceedings easier for the EPO and by no means as a mandatory requirement when filing the application.