The patent relates to a method for producing a three-dimensional object in general, and a stereolithography method in particular.
Brief outline of the case
The opponent appealed the decision to reject the opposition.
During the appeal procedure the opponent filed D8= EP 2 505 341 that is well after the 9 months opposition period.
In the communication under Art 15(1) RPBA20 annexed to the summons the parties were informed that the board was inclined to admit D8 under Art 13(1) RPBA20. The board further expressed its preliminary opinion that the subject-matter of claim 1 as granted lacked novelty over D8 under Article 54(3).
In reply to the summons, the proprietor filed AR 1, 1A and 2-4.
The proprietor requested not to admit D8 into the appeal proceedings.
D8 was admitted under Art 13(1) RPBA20.
Claim 1 as granted was lacking N over D8, hence the patent could not be maintained as granted.
The board did not admit AR 1, 1A and 2-4 under Art 13(2) RPBA20 and the patent was revoked.
Admissibility of D8 = prior art under Art 54(3)
Against the admittance
D8 was submitted by the opponent more than six months after the filing of the statement of grounds of appeal. It represents an amendment to the appellant’s appeal case, which, pursuant to Art 25(1) RPBA20, falls under the second level of the convergent approach of Art 13(1) RPBA20.
the board noted however that it is established case law that further decisive criteria for admitting late-filed documents under Art 13(1) RPBA20 can be their prima facie relevance and whether they introduce any complex matter, see T 731/16, Reasons 2.2; T 2796/17, Reasons 5.5 and T 310/18, Reasons 1.
The opponent’s justification for the late filing was that it was found by chance during a search against another patent of the proprietor and was submitted at the earliest possibility in the present proceedings.
The board shared the proprietor’s view that D8 could have been found and filed in the proceedings at an earlier stage. It lies in the same technical field of the patent and was published almost five years before the end of the nine-month opposition period.
Moreover, at least since 2017, it seems to have been pivotal in the examination proceedings of EP16195931.7, a divisional application derived from the European patent application on which the patent is based, after it had been cited in the search report.
Thus, no reasons are immediately apparent that could justify the opponent submitting D8 for the first time in appeal proceedings and only after the filing of the grounds for appeal.
For its admittance
Conversely, its role in the examination proceedings on the divisional application also implies that the proprietor must have been familiar with the content of document D8 more than two years before it was submitted in the appeal proceedings.
It is also noted that document D8 was filed more than two-and-a-half years before the date of the OP before the board, so that the proprietor had in principle sufficient time to assess its content and, where necessary, to react in an appropriate manner. Hence, there is a strong case for arguing that the respondent could not have been taken by surprise by the filing of document D8.
Prima facie relevance
D8 is prima facie relevant as a mere glance at the rather straightforward figures of document D8 reveals that it discloses an additive manufacturing technique of the bottom-up type, i.e. repeatedly raising and lowering a build platform relative to a fluid substance in a container irradiated by a light source placed at the bottom of the container. At first glance, D8 appears to represent such a straightforward disclosure with particular relevance for the case at issue in the sense that it could reasonably be expected to prejudice the maintenance of the patent.
Admissibility of the AR filed after the summons
The proprietor essentially argued that the board’s provisional opinion on the admittance of D8 set out in the communication pursuant to Art 15(1) RPBA20 meant that the circumstances under which the AR were filed were exceptional.
The board did not agree.
The board noted that its preliminary findings on the prima facie relevance in point 17 of the communication were entirely based on the opponent’s submissions presented in section 1.1
The proprietor has not reacted to the opponent’s submissions regarding D8 in spite of the hint that the board was inclined to admit D 8 and that it considered D8 potentially N destroying.
In consequence, the board’s provisional opinion on D8 could not be regarded as creating exceptional circumstances within the meaning of Article 13(2) RPBA 2020 (see also “Case Law of the Boards of Appeal of the European Patent Office”, tenth edition, July 2022, V.A.4.5.6.c).
The proprietor justified exceptional circumstances by submitting that it was highly improbable that late-filed documents were admitted in appeal.
While the board acknowledged that already at the second level of the convergent approach strict conditions apply, the question whether late-filed evidence is admitted in appeal proceedings under Art 13(1) RPBA20 is actually very much dependent on the circumstances of the case.
It therefore serves little purpose to assign a probability to the admission of late-filed evidence, let alone to use that probability as justification that the circumstances two-and-a-half years after the evidence had been filed were exceptional.
The proprietor further argued that it should be given the opportunity to react to the belated filing of document D8 and amend the claims accordingly. Reference was made to Art 113(1).
The board held that neither Art 113(1) nor the principle of party disposition expressed in Art 113(2), give any right to an applicant or patent proprietor in the sense that the EPO is in any way bound to consider a request for amendment put forward by the applicant or patent proprietor, see also G 7/93, Reasons 2.1.
The right to file amended claims is defined in Art 123(1) in accordance with the Implementing Regulations. These provisions, and not Art 113, set the conditions for taking amendments to the claims into account.
With a view of deciding the underlying case, the present board concurs with the jurisprudence having found that the first sentence of Art 123(1) in conjunction with R 81(3) and 100(1) gives the deciding organ a discretionary power to consider amendments filed in opposition and opposition appeal proceedings, cf. R 6/19, Reasons 6 to 11 and T 966/17, Reasons 2.2.1.
It follows that the opportunity to present comments does not inevitably extend to having any auxiliary request submitted at any time automatically admitted into the proceedings, see also R 9/11, Reasons 3.2.2; its admittance in the appeal proceedings is subject to the applicable provisions of the RPBA, in this case Art 13(2) RPBA20.
This applies even if an AR is submitted in response to late-filed evidence. If that were not the case, Art 13(2) RPBA20 would have little purpose since any amendment filed after notification of a summons to oral proceedings – in the present case in response to the board’s communication pursuant to Art 15(1) RPBA20 – would have to be admitted, even if there were clearly no exceptional circumstances.
AR 1, 3 and 4 were filed more than two-and-a-half years after the opponent had submitted D8 and provided detailed argument on why it was of the view that the subject-matter of claim 1 as granted lacked N over D8. AR 1A was even filed a further two months later.
Even after the board’s communication was issued, the proprietor still had the opportunity to react and amend its appeal case. In fact, at the end of the communication the board drew the attention of the parties to the provision of Art 13(2) RPBA20.
The proprietor’s further argument that N over D8 was discussed for the first time during the OP cannot convince the board that the circumstances warranted admitting the late-filed AR.
The argument is based on the false premise that the discussion of the N objection was confined to the exchange of facts and arguments at the OP. However, the discussion whether the subject-matter of claim 1 as granted lacked N over D8 was initiated with the written submissions of the opponent, i.e. when D8 was filed. The fact that the proprietor chose not to present its counterarguments until the day of the OP does not alter this conclusion.
In view of its prima facie relevance, it is somehow “surprising” that the original search did not allow to find the prior art under Art 54(3).
The original international search report was established by the EPO and mentioned one X and two Y documents. The search for the divisional application mentioned D8 as E document as well as an A,D document. The search examiner was identical and acted as 2d examiner in opposition.
The discussion over the admissibility of the late-filed prior art and the late-filed AR illustrate two concepts well enshrined in the case law and the practice of the EPO:
- In opposition, a patent should not be maintained when it does not have any raison d’être, for instance in view of a prima facie N destroying prior art under Art 54(2 or 3), whether this relevant document is late filed or not. See Catchword of T 156/84 and Guidelines E-VI, 2, which do however not apply in appeal procedures.
- A proprietor has to be pro-active all along the procedure and should not wait until he is aware of the position of the board in order to react to a late-filed submission of the opponent by himself late-filing further requests. In the past, numerous decisions insisted on the fact that a communication of the board is not to be understood as an invitation to file further requests, see e.g. T 1459/11 or T 1932/12, Reasons 3.1, penultimate paragraph. The RPBA20 have not rendered the situation more enjoyable for the proprietor, but this does not come as a surprise.