Opposition, late evidence and a narrowing amendment

The main request cannot be maintained. D1 discloses each step of claim 1 with values inside the claimed ranges: cleaning at 60°C for 3 min is within 50-70°C for 2-5 min; acid activation is present; electroplating at 3 A/dm² is within 1-5 A/dm²; and baking at 180°C for 20 min is within 180-220°C for 20-40 min. The fact that D1 also discloses temperatures outside the claimed range does not help, because D1 expressly discloses a specific embodiment that falls within every claimed range. For novelty under Article 54 EPC, a specific disclosure inside the claim destroys novelty. The client's 'partial overlap' argument mistakes a generic range for a specific disclosure. D1's 180°C/20 min example is a concrete disclosure, not a mere overlap. The examiner or opposition division will therefore find claim 1 lacking novelty. The client should be advised that maintaining the main request unchanged risks revocation of the patent and loss of the opportunity to present a credible auxiliary request.

A suitable first auxiliary request is to limit claim 1 to the Example 3 combination: cleaning at 65°C for 4 min, electroplating at 4.5 A/dm² and baking at 195°C for 30 min. This is narrower than claim 1 and is based on Example 3, which is part of the application as filed, so it complies with Article 123(2) EPC. It also narrows the protection, so it complies with Article 123(3) EPC. The amendment is novel over D1, which discloses 180°C for 20 min and 3 A/dm², and over D2, which discloses 200°C for 30 min but no electroplating step. For inventive step, the argument is that Example 3 shows better adhesion than Examples 1 and 2 and that neither D1 nor D2 teaches the specific combination of 4.5 A/dm² with 195°C for 30 min. The risk is D3: if D3 is admitted and discloses the same combination, the first auxiliary request lacks novelty. A second auxiliary request could add a feature not disclosed in D3, for example a specific alkaline cleaning step or a specific acid activation, but it must also have a clear basis in the application as filed. The client should be told that the broad main request is not defensible and that the amendment is a compromise, not a victory.

D3 was filed after the opposition period and only one month before the oral proceedings. Under Article 114(2) EPC the opposition division has discretion whether to admit it. Relevant factors are whether D3 is prima facie highly relevant, whether it could have been filed earlier, whether it is a response to an amendment, and whether admitting it would delay the proceedings. Because D3 allegedly discloses the exact Example 3 combination, it is highly relevant and may be admitted despite the late filing. You should therefore prepare on the assumption that it will be admitted. First, challenge its public availability and date: a brochure dated 2019 is not automatically prior art; you need proof that it was distributed at the fair without confidentiality and that the distribution date is before the priority date. Second, check whether D3 discloses every feature of the amended claim, including the cleaning and activation steps. Third, prepare auxiliary requests that avoid D3. At the oral proceedings, request time to consider D3 if it is admitted, and object clearly to its late filing. Do not rely only on admissibility; have a fallback that is novel and inventive over D1, D2 and D3.