EP 3 574 371 B1 relates to a computer-implemented method for determining centring parameters of lenses in a spectacle frame.
Brief outline of the case
The OD decided that claims 1 and 6 of the MR filed in reply to the opposition were held lacking N over D2 which was not mentioned in the ESR. The same applied to AR1=original AR13.
The new MR consisted of claims 1-9 and 11-24 as granted. In AR1, claims 5-7 as granted had been deleted.
Using its discretion, the OD did not admit AR2 filed during OP.
The patent was maintained according to AR3.
The objection of lack of N over D2 was filed by the opponent on the last day before the period set under R 116(1). It was thus clearly a late filed objection which needed a discretionary decision of the OD for its admissin..
The proprietor appealed the OD’s decision.
The case was remitted to the OD for further prosecution.
The OD’s decision not to admit AR2
The OD found that AR 2, being filed during the OP, had been filed after the period set under R 116(1) and was therefore late filed.
The OD further noted that AR14 was filed in due time before the period set under R 116(1). The newly filed AR2 was identical to AR14 with the difference that claims 6 to 10 were maintained.
Based on this constellation of AR 2 and 14, the OD came to the conclusion that, based on the situation prior to the filing of AR 2, the proprietor had no reason to file a new request with additional claims.
For the OD, a change in a party’s strategy, which is independent of the course of the proceedings, is not a valid reason for a late submission.
AR 2 should have been filed at the latest shortly before expiry of the time limit under R 116(1) and was therefore not admitted into the proceedings pursuant to Art 114(2).
The board’s decision
The decision of the OD not to admit AR 2 was erroneous.
Checking the admissibility of late filed AR has to be carried out according to the Guidelines E-VI, 2.2.2.
For the board, the OD had not correctly determined the situation leading to the filing of AR2.
The relevant starting point was that on the last day before the period set under R 116(1) the opponent had raised for the first time an objection of lack of N over D2. The OD exercised its discretion at the OP to admit this new objection to the proceedings, on the basis of which the claimed subject-matter of the MR and AR 1 was then considered to lack N.
The board also noted that the proprietor had filed AR14 before it was even aware of the objection of lack of N with regard to D2. AR14 could therefore only be seen as an attempt to overcome the opponent’s previous objections or to take account of the OD’s preliminary opinion.
This means that AR14 could not be regarded as a reaction to the new objection of lack of N over D2. Contrary to the OD’s view, AR14 is therefore not part of the initial situation to be taken into account in determining the amendment brought about by the filing of AR2.
Based on the relevant facts of the case, where a new objection under Art 54(1) was only raised on the last day before the period set under R 116(1), was only admitted to the proceedings by the OD at the OP and then led to the lack of N of the claimed subject-matter of the MR and AR1.
The filing of a new AR at the OP is to be regarded as a timely and appropriate response. In this case, the admission of the new AR 2 was not at the discretion of the OD, but AR2 had to be admitted. Moreover, this procedure complies with the Guidelines E-VI, 2.2.2.
Comments
On the face of it, the OD should have admitted AR2op. The OD should at least have given reasons why filing during OP a further request with two independent claims was not admissible. I refer here to T 2108/22, commented in this blog.
In T 366/11, the board held that he fundamental principle of equal treatment that underpins proceedings before the EPO and the right to be heard as enshrined in Art 113(1) require that in inter partes proceedings a party be given equal opportunity to react to actions of the other party. By not respecting the equality of treatment, the OD committed a SPV.
In this case, the OD decided not to admit new documents filed late filed by the opponent, but admitted new requests of the proprietor.
The board held that the late documents may have been originally cited against the granted claims, but it was clear that at the OP before the OD the opponent decided to cite these documents in response to the new requests, which he had received shortly before the OP.
In view of T 366/11, the present board could have decided that the OD had committed a SPV.
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