The application relates to a visual localisation method for a mobile device.
Brief outline of the case
The application was refused for lack of IS of the MR and AR I-III.
The applicant appealed the refusal.
The board confirmed the refusal although for different reasons than the ED.
The reasons were added subject-matter under Art 123(2) and lack of clarity under Art 84.
In a communication under Art 15(1) RPBA20 accompanying the summons to OP, the board expressed, among other things, its provisional opinion that claim 1 of the MR and of each of AR I to III infringed Art 123(2), that claim 1 of the MR was unclear and that the subject-matter of claim 1 of the MR and each of AR I to III lacked IS.
Disregarding the objections under Art 84 and 123(2), the board agreed in its communication under Art 15(1) RPBA20 with the ED on the lack of IS.
Allowability of the MR + AR I-III
In its communication under Art 15(1) RPBA20, the board raised for the first time objections under Art 123(2) against the MR.
Applicant’s late filed arguments relating to the objection under Art 123(2) were admitted in view of the fact that this objection was raised for the first time in the board’s communication.
After the discussion during OP the board nevertheless held that claim 1 of the MR was infringing Art 123(2).
As the applicant did not present any arguments against the objection under Art 123(2) in the board’s communication, and relied only on its written submissions at the oral proceedings, AR I and II were not allowable for the same reason.
Although AR III was amended with respect to AR III in the decision, the board admitted it under Art 12(4) RPBA 20. The new AR III was not allowable under the same circumstances and reasons than AR I and II.
Admissibility and allowability of AR IV
AR IV was admitted under Art 13(2) RPBA20 insofar as AR IV constituted an attempt to overcome objections under Art 84 and 123(2) raised for the first time in the board’s communication under Art 15(1) RPBA 20.
At the OP, the board raised, for the first time, several clarity objections against claim 1 of AR IV. Only one of them was fully discussed during OP.
The board held that the wording “a sufficiently high probability” in step (e) of claim 1 of AR IV was unclear.
Admissibility of AR V
After AR IV was held not allowable for lack of clarity, the applicant requested time to draft and file a further AR, i.e. AR V, in response to the clarity objections raised by the board during the OP.
The board did not admit AR V in the procedure under Art 13(2) RPBA20.
The applicant’s position
AR V was filed in direct response to clarity objections raised by the board for the first time at the OP, with a view to overcoming those objections. For the applicant, this course of action in the appeal proceedings constituted exceptional circumstances. AR V should thus be admitted under Art 13(2) RPBA20 in view of the applicant’s right to be heard.
The board’s position
The board considered that the fact that it raised fresh objections under Art 84 against claim 1 of AR IV at the OP did not constitute exceptional circumstances under Art 13(2) RPBA20.
AR IV was filed for the first time in response to the board’s communication under Art 15(1) RPBA20, which had raised fresh issues under Art 84 and Art 123(2).
Consequently, the OP were the first opportunity for the board to raise objections against AR IV, and the board could be expected to raise fresh objections (in particular under Art 84 and 123(2) against this request at the OP, in the event that said request gave rise to such objections.
Moreover, the board’s clarity objection against AR IV falls under the board’s clarity objection raised in its communication under Art 15(1) RPBA20 against the word “adaptive” in feature (e) of claim 1, which the applicant tried to overcome with an amendment containing the contested wording “sufficiently high probability“. When the applicant argued in favour of the admissibility of AR V, it did not explain why the board’s clarity objection did not fall under the objections raised in the board’s summons.
In the circumstances of the case in hand, the fact that the board raised clarity objections against claim 1 of AR IV at the OP merely represents the normal course of action in appeal proceedings that the appellant had to have expected.
The board referred to T 2214/15, Reasons 5.3 and 5.4. Consequently, no exceptional circumstances can be seen in the course of action taken at the OP before the board that could justify the admission of AR V under Art 13(2) RPBA20.
The board further noted that for the above consideration of admissibility it is irrelevant whether claim 1 of AR V at least prima facie overcomes any or all of the clarity objections raised by the board for AR IV.
Objection under R 106
The applicant raised an objection under R 106 which was dismissed by the board.
In its objection under R 106, the applicant was of the opinion that in view of the circumstances of the case, the newly raised objections under Art 84 could not reasonably be dealt with under the time constraint of OP and requested that the case should be remitted to the first instance or proceedings be continued in writing.
The board explained that it was under no obligation to raise all possible clarity (or other) objections against a request newly filed during the appeal proceedings, the admissibility of which is to be assessed under Art 13(2) RPBA20 and which has been drafted in a way that gives rise to numerous new clarity objections. Hence, it is irrelevant that the board informed the appellant at the OP that it had identified additional clarity objections as it was sufficient and appropriate to raise only those which the board considered to be particularly relevant for the decision.
The board disagreed with the applicant’s argument that not admitting AR V violated the applicant’s right to be heard under Art 111(sic).
For the board, the applicant could have submitted its request to remit the case for further prosecution on the basis of AR IV as early as with its response to the board’s preliminary opinion. Since the applicant filed a new request, it had to expect that this request could give rise to fresh objections.
Yet it did not submit its request for remittal until a very late stage at the OP, after it had been heard on both the clarity issues raised against AR IV and the admissibility of AR V. Consequently, the applicant’s request for remittal was also filed late, which is another reason for rejecting it.
The board found that at the end of the OP, it was in a position to decide on all of the appellant’s substantive requests, including AR IV and V, so there was no reason to continue the appeal proceedings in writing and delay a decision on the applicant’s case.
Allowing the applicant’s request would have clearly run counter to the need for procedural economy and the public interest that the appeal case be settled in due time. Moreover, it appears that the applicant had had enough time at the OP to file a further request, namely auxiliary request V, in order to deal with all of the board’s objections. The fact that the board considered AR V to be inadmissible for procedural reasons cannot be a reason to continue the appeal proceedings in writing in order to give the applicant more time to formulate and submit further requests.
The applicant’s request for continuation in writing was therefore rejected as well.
Comments
Although the non-admissibility of AR V can be justified for strict legal reasons, the non-admissibility of AR V nevertheless leaves an impression of unease.
That a further objection could be raised during OP on a request filed in reply to objections filed for the first time in the communication under Art 15(1) RPBA20 is not at stake. This is to be expected, and Art 13(1) RPBA20 could have been a reason not to admit AR V. For this it would have needed for the board to have a deeper look at AR V, and the board was manifestly unwilling to do so.
That it is sufficient and appropriate to only raise objections which a board considers to be particularly relevant for the decision is not to be disputed. However any new objection raised during OP should, in principle, render a further request, attempting to overcome the new objection, admissible.
I am not sure whether an OD could do the same when successively coming up with new objections during OP. It could well be sanctioned for not applying correctly and in a reasonable manner the discretion it has in admitting or not late filed requests.
The RPBA20 have given the boards a great deal of discretion, but the application of this discretion is not submitted to any control.
It is bordering on bad faith when the board takes pretext that the applicant did not request remittal of the case for further prosecution on the basis of AR IV as early as with its response to the board’s preliminary opinion.
In order not to fall in the trap, the only conclusion to be drawn from this decision, is not only to file at least one new request in reply to new objections raised by a board in a communication under Art 15(1) RPBA20, but as well to request at the same time remittal to the first instance.
It should in any case be explained by the party why the board’s clarity objection did not fall under the objections raised in the board’s summons
Reasonable doubts can be raised about the procedural economy if this would occur, and one can expect that other reasons will be raised by a board for not remitting. That a party is not entitled to two degrees of jurisdiction is one of them. But then coming up with non-admissibility of a further request would be rather unjust.
On the other hand, requesting continuation of the appeal procedure in writing does not appear to be a sensible request. In view of the still remaining backlog, boards want to close appeal proceedings as swiftly as possible and hence will only very rarely agree on continuing in writing.
https://www.epo.org/law-practice/case-law-appeals/recent/t200975eu1.html
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