The application relates to semiconductor devices including mesa structures and related methods.
Brief outline of the procedure
The application was refused for lack of IS of the MR and AR1 and 2. The contested decision further contained some remarks concerning objections under Art 84 and 123(2).
The board decided that a patent could be granted on the basis of request which was filed after the communication of the board.
The case is interesting in view of the reasons given by the board when admitting the late filed request.
Admissibility of the request under Art 13(2) RPBA20
The case is interesting as the board made clear in the communication under Art 15(1) RPBA20 that application as filed contained patentable matter. It did not simply comment negatively on the requests on file.
Dependent claim 9 was open to an objection under Art 123(2) and the description was open to objections under Art 84 as some terms were either unclear or in contradiction with independent claim 1.
The communication invited the filing of amendments to resolve the issues raised well in advance of the oral proceedings.
The board was satisfied that the amendments addressed the board’s objections, and prima facie appear suitable to overcome the outstanding objections.
A grant could be decided.
The meaning of “exceptional circumstances” in Art 13(2) RPBA20
The board was of the opinion that the situation thus created cannot be considered to constitute truly “exceptional circumstances” as required by Art 13(2) RPBA20, at least according to its plain wording.
Nevertheless, the Board was convinced that the procedural situation in the present case is certainly covered by the legislative intent underlying the structure of Art 12 and 13 RPBA20, and the request is not inadmissible for the absence of exceptional circumstances.
The applicant stated that the board raised new objections. Indeed, this is a situation that was foreseen to constitute an exceptional circumstance for the purposes of Art 13(2) RPBA20
However, some of the objections mentioned by the board were not new. The invitation to adapt the description may have been new, but certainly could not have been surprising.
On that basis, the Board could have come to the conclusion that the amendments were not admissible under Art 13(2) RPBA20.
Articles 12 and 13 RPBA20 mainly serve to prevent the raising of such issues that cannot be expected to be treated by other parties or the board within the foreseeable extent of the appeal proceedings, and in particular in view of the expected decision at the end of the OP, cf. Art 15(6) RPBA20.
In the present case the board was satisfied that the amendments in fact did not raise new issues for the board. They are therefore not detrimental to procedural economy, and there is also no other party whose interest could be jeopardized by such late amendments.
The board did also not see any reason to depart from the settled practice to adapt the description only after the establishment of an allowable claim set.
When new objections are raised by the board
The Board observed that even in the situation where the board raises new objections, the appellant is expected to provide an explanation for the late filing of any amendments.
In view of the totality of the circumstances of the present case, in particular in view of the fact that the amendments were filed following the express invitation from the board, requiring such an explanation from the appellant is clearly counter-intuitive. The Board was well aware for which purpose the amendments were filed and why they were filed at that stage.
Thus no detailed arguments and reasons are required from the appellant in the present case.
Such a decision, albeit only valid in appeal after refusal, is to be welcomed.
If there is something patentable in an application, even after a refusal, it is good if a board takes the trouble in determining it and guides the applicant towards a grant.
It is also to be welcomed that the board confirmed the settled practice to adapt the description only after the establishment of an allowable claim set.
The board made also clear that when filing a submission, even after new objections have been raised in the communication under Art 15(1) RPBA20, an explanation is due. The only exception is when the applicant follows the instructions of the board.
The board avoided a mechanical application of Art 13(2) RPBA20 by admitting amended claims after its communication under Art 15(1) RPBA20 as well as an adapted description.
After all the duty of the EPO is to grant patents answering the patentability requirements of the EPC and not to refuse applications on purely formal grounds.
It is doubtful that this decision was detrimental to the production/productivity objectives set to the BA.
T 1906/19 is going in the same direction and has been commented on the following link: