T 1963/17 - Filed with the wrong description

Key points

• "The case history is the following. The application based on two US priority filings was published on 26 July 2012 with a description which did not match with the claims and vice versa, despite being both in the same technical field of catalysts. After entry into the European phase, the examiner considered that the claims could not be searched and the amended description not be taken into account. With letter dated 22 September 2014 the applicant reverted to the claims as originally filed and it filed a description that consisted of a verbatim repetition of the features defined in the original claims with a further reference to figure 1 as originally filed. "
• The question is whether this is possible, i.e. completely deleting the original description and replacing it by a "verbatim repetition of the features defined in the original claims".
• The Board: “the provisions of the EPC do not allow the replacement in toto of an original description with a different one”.
• The Board reasons that this follows from R.56 EPC being limited to missing parts of the description and hence not being applicable to entire descriptions.
• “Since Rule 56 is a provision that relates to Part IV of the EPC (Procedure up to grant, Arts. 90 - 98) it appears of no relevance to the interpretation of this specific Rule whether the replacement of the description adds subject matter to the application, or not (Article 123(2) EPC).”

EPO T 1963/17 -  link

Summary of Facts and Submissions

I. The appeal lies from the decision of the examining division refusing European patent application n° 12 736 476.8 because the claims of the then pending requests lacked support by the description and clarity (Article 84 EPC). Furthermore the amended description did not comply with the requirements of Rule 42(1)(e) EPC, as the applicant replaced the original description, that did not contain support for the present claims, with a new one which merely listed the embodiments and preferred embodiments of the invention as defined in claims 1 to 15 then on file.

II. The case history is the following. The application based on two US priority filings was published on 26 July 2012 with a description which did not match with the claims and vice versa, despite being both in the same technical field of catalysts. After entry into the European phase, the examiner considered that the claims could not be searched and the amended description not be taken into account. With letter dated 22 September 2014 the applicant reverted to the claims as originally filed and it filed a description that consisted of a verbatim repetition of the features defined in the original claims with a further reference to figure 1 as originally filed. After a further exchange of letters, the examining division refused the application because in its view a description that consisted of a mere repetition of the claims was insufficient to meet the requirements of Article 84 and Rule 42 EPC.

[...]

Reasons for the Decision

1. Compliance with the requirements of Articles 78, 123(2), Rules 42, 56 and 139 EPC - Exchange of an erroneously filed description

J 0012/14 - Missing drawings

J 0012/14

For the decision, click here

EPO Headnote

1. The filing of drawings where the re-production of the figures is of low visual quality cannot be remedied by Rule 56 EPC.

2. It is within the responsibility of the applicant to determine the scope of the disclosure by selecting a readable version of the application documents including the figures reproduced in the drawings. However, the question of what technical features the figures in the drawings show with respect to the claimed invention is not part of the formal examination procedure before the Receiving Section.

Key point

• An invitation to file missing parts under Rule 56(1) can be requested. A refusal to issue such missing parts is appealable, despite Rule 56(1) last sentence stating that the applicant can not invoke the omission of the communication under Rule 56(1). 

Procedural 
II. The application concerns performance apparel with a basis layer and one or more layers (garments worn during a physical activity) with improved functionalities. On 11 January 2012, the EPO received the patent application via EPO-line electronically. It was accompanied by a set of 19 drawings with 39 figures. Figures 1 to 37B were supposed to show schematic torsos with various views of the garment. When the application was received at the EPO some of the figures were partly blurred and Figs. 4 and 5 were nearly black all-over.

III. The Receiving Section invited the appellant to remedy the deficiencies according to Rule 58 EPC and Rule 49(2) and (12) EPC.

IV. The appellant filed two sets of drawings to replace the drawings on file. The first set was said to be identical to the drawings of the US priority document. The second set showed corresponding formal drawings.

V. The new sets of drawings were not accepted by the Receiving Section for the reason that they revealed information which was not present in the original application documents.

VI. The appellant then replaced all drawings on file by a further set of drawings in which the figures were either left out entirely (Figs. 4, 5) or they showed no further information other than the outer lines of a torso. Together with these drawings the application was published.

VII. The appellant also requested the Receiving Section to issue a communication under Rule 56(1) EPC for the reason that the bad quality drawings filed with the application appeared to have missing parts, and those missing parts of the drawings were to be seen as "missing drawings" under Rule 56(1) EPC.

VIII. With the impugned decision the Receiving Section rejected the request. The Receiving Section was of the opinion that there were no "missing drawings" within the meaning of Rule 56(1) EPC and that Rule 56 EPC only allowed the filing of missing drawings, but not the replacement of filed drawings by an identical set of better quality drawings, without losing the earlier filing date.

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