EP 3 621 766 B1 relates to a method for producing a 3 D structure by means of laser lithography with a modified exposure dose at edge portions and corresponding computer program product.
Brief outline of the case
The OD found that claim 1 as granted lacked N over two documents not mentioned in the ISR established by the EPO. The OD decided maintenance according to AR3.
The opponent appealed this decision.
The board held that claim 1 as maintained was not compliant with Art 123(2) in view of feature M3. The same applied to AR1-11.
The board admitted AR12 and considered that the amended feature M3 was compliant with Art 123(2).
The board also decided that the OD had committed a SPV.
The case was remitted to the OD for further prosecution.
The case is interesting in view of the admissibility of AR12 and of the SPV.
In this blog entry we will deal with the admissibility of AR12.
The opponent’s point of view on the admissibility of AR12
The opponent requested that AR12 not be admitted to the appeal proceedings. AR12 had been submitted for the first time in the response to the appeal, was late and should have been submitted during the opposition proceedings in view of Art 12(6) RPBA, Furthermore, the large number of AR, 95 in total, constituted an abuse of procedure. Furthermore, the AR lacked convergence.
For the opponent AR12 was not prima facie allowable as claim 1 contained still an inadmissible intermediate generalisation.
The board’s decision on the admissibility of AR12
The board acknowledged that the filing of AR12 was an amendment of the proprietor’s case under Art 12(4) RPBA and its admission is at the discretion of the board.
In the board’s view, the amendment is not complex; it addresses the objections raised relating to the not allowable intermediate generalisation and did not conflict with the principle of procedural economy. A feature has been included in claim 1 of AR12 which the OD had implicitly taken to be included so that the remainder of the discussion was likely to remain unchanged. Prima facie patentability was therefore irrelevant here.
Since, during the opposition proceedings, the OD took the preliminary view that the feature of a pulsed beam was implicitly contained in claim 1, and this view was ultimately confirmed in the contested decision, there was no specific reason during the opposition proceedings to file a corresponding AR. Given that the opponent pursued the objection of intermediate generalisation during the appeal proceedings, the circumstances of the appeal case justify admission also within the meaning of Art 12(6) RPBA.
Comments
On the admissibility of AR12
The board confirmed that any new request filed when entering appeal, represents an amendment to the proprietor’s case under Art 12(4) RPBA.
However, that AR12 has been admitted is to the credit of the board and is in clear contrast with T 0712/24 recently commented on this blog. Contrary to T 0712/24, the board looked at the substance and did make the filing of AR dependent of the time limit set in R 79(1).
Contrary to what has been alleged in T 0712/24, there is no established line of case law when it comes to decide upon the admissibility of AR should be subject to a referral to the EBA.
Procedural case law of the boards should not be dependent on the whim of the boards, and some guidance in the matter would make procedural case law
I do agree with the opponent that filing 95 AR can be considered as abusive, even if the board did no say anything about it.
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