The application relates to an automated three dimensional mapping method.
Brief outline of the case
The application was refused for lack of sufficiency. The applicant appealed the decision.
In the statement of grounds of appeal, the applicant, inter alia, requested that the case be remitted to the ED and the appeal fee be reimbursed because its right to be heard under Art 113(1) had been violated.
The board confirmed the lack of sufficiency and the request for reimbursement of the appeal fee was refused.
The case is interesting in view of the decision of the board considered that the ED had not committed a SPV.
The applicant’s point of view
The applicant argued that the ED made an error when raising fresh objections under Art 83.
The new objections took the applicant by surprise. In view of the ED’s statements in the annex to the summons to OP, and given the nature and extent of the fresh objections under Art 83, the applicant was not given enough time to respond to all of these objections.
In this stressful situation, the representative of the opponent “did not find itself” to request postponement of the OP. The ED therefore acted incorrectly by not postponing the OP.
In this regard, the applicant referred to the decisions T 1164/00, T 2235/12 and T 248/92.
The board’s point of view
The board agreed with the applicant that fresh objections under Art 83 were raised by the ED during the OP. These objections were indeed different from the objection under Art 83 mentioned in the annex to the summons.
According to the minutes of the OP, the board noted that when faced with these fresh objections, the applicant was asked by the chairman of the ED whether it needed a break to consider the new objections. There is no indication that the applicant asked for interruption or postponement of the OP. Rather, still according to the minutes, the applicant commented in substance on the new objections and provided several counter-arguments.
For the board, in the absence of any request by the applicant for the OP to be interrupted or postponed, the board found that the applicant was not denied the time it deemed necessary to deal with the fresh objections and thus the appellant’s right to be heard under Art 113 was not violated.
The decisions cited by the applicant did not help its cause.
In T 1164/00, the OD introduced a new ground of opposition during OP and the board decided that the OP should have been postponed.
In T 2235/12 the ED introduced two new documents two days before the OP and raised a new N objection based on one of those documents. By not postponing the OP, the ED violated the applicant’s right to be heard.
In T 248/92 the relevant objection of lack of IS based on common general knowledge was raised for the first time during the OP before the ED. In that case the applicant did not present any arguments or requests in relation to the new objection raised by the ED. In particular, the applicant did not request adjournment of the OP, and nor did it request that the proceedings be continued in writing. Therefore, the board found that the ED was entitled to conclude that the matter had been thoroughly discussed and that the right to be heard had not been violated.
The board found that it is even clearer in the current case than it was in T 248/92 that the applicant did not request interruption or postponement of the OP but entered into the substantive discussion of the fresh objections by providing several counter-arguments.
When faced with new objections raised during OP which were manifestly not part of the legal and factual framework of the original procedure, it is of utmost importance to at least request a break long enough in order to prepare counter-arguments.
If the objections are rather extensive, and possibly require to discuss them with the client, it is preferable to request adjournment of the OP.
By not requesting a brake or an adjournment of the OP, the concerned party admits de facto the objections raised during the OP.
The same actually applies not only in case of new objections but also in case of new requests, new pieces of prior art or experimental data raised or filed during OP before an ED or an OD.
In T 1605/16, according to the minutes of the OP, no request for a review of experimental data submitted by the proprietor during OP was filed by the opponent, so that the board could not find any violation of the right to be heard.
Faced with new submissions during OP, experience shows that a short brake might not be sufficient.
Faced with new submissions during OP, one further request should be admitted by the department of first instance, but the admissibility of further requests is questionable.