T 2277/19 - You get what you (don't) see

Key points

• This concerns a patentee appealing against the grant because after the grant he realized that the Druckexemplar is not the version that he thought would be granted.
• Board 3.2.02  does not follow T 1003/19 (Board 3.3.05) and T 2081/16 ( Board 3.5.03).
• The present Board: “in the board's view, there is no legal basis in the European Patent Convention for a distinction between the text referred to in a communication under Rule 71(3) EPC and that reflecting what the examining division actually intended. Moreover, Rule 71(6) EPC addresses the possibility that the text communicated under Rule 71(3) does not reflect the appellant's requests. In the board's judgement, Article 71(3) EPC thus imposes on the applicant a duty to check and verify this text. The fact that an applicant does not exercise its right to request amendments under Rule 71(6) EPC can therefore only be interpreted as approval of the communicated text, i.e. the text intended for grant. Whether the applicant notices a possible error has no effect on the fact that this approval is binding.”
• The Board refuses to refer questions to the Enlarged Board of Appeal: “The question does not warrant a referral to the Enlarged Board of Appeal, since the board has no doubt as to how to answer the question on the basis of the European Patent Convention”. 
• I note that the issue with the Druckexemplar present application appears to be a case of ‘unmarked Examiner's amendments’  in the Rule 71(3) Communication. I realize that ‘Examiner's amendments’ is USA terminology; for the EPO ‘amendments by the examining division of own motion’ is more appropriate. Though I suspect that it actually boils down to hiccups in the software systems used by the EPO in the preparation of the electronic Druckexemplar, in the sense that the Examiner does not forget to include changes he makes in the ‘special field provided at the bottom of page 1 of Form 2004C’, but rather that somehow pages are deleted or reinstated in the eDREX without any person in the EPO consciously taking an action to that effect.
• One may also ask whether the ‘the text communicated to him’ of Rule 71(5) is affected by a content of the "special field provided at the bottom of page 1 of Form 2004C" that is inconsistent with the Druckexemplar as included in the Rule 71(3) Communication.
• The principle of good faith may possibly require that, since the EPO provides a "special field at the bottom of page 1 of Form 2004C" for mentioning any amendments made by the examining division in the Rule 71(3) EPC Communication, the EPO actually uses that field, such that the applicant has a legitimate expectation that there are no further amendments than those mentioned in that field (i.e. if the field is empty, there are no amendments made by the EPO). Possibly an appeal against a grant can be used to invoke the protection of such legitimate expectations. 
• I use the opportunity to highlight that the marked-up text intended for grant is included in the Rule 71(3) Communication. The clean copy version is only placed in the (public) file. 

EPO T 2277/19 -  link

Reasons for the Decision

1. Admissibility of the appeal

Article 107 EPC, first sentence reads as follows: "Any party to proceedings adversely affected by a decision may appeal." It follows from this sentence that the appeal proceedings are open only to a party which has been adversely affected by the impugned decision.

In the present case, the appeal is not admissible since the appellant is not adversely affected by the decision to grant.

1.1 The board does not concur with the appellant that the erroneous inclusion of the superfluous pages of drawings was a direct or indirect consequence of any discrepancy between the Druckexemplar and Form 2004. The only inconsistency between Form 2004 of the communication under Rule 71(3) EPC and the Druckexemplar consists in the fact that the first seven drawing pages are indicated on Form 2004 as "Drawings, Sheets 1/18 to 7/18", whereas in the Druckexemplar the corresponding sheets are numbered 1/7 to 7/7. Irrespective of the different numbering, the same drawing pages 1 to 7 are mentioned in Form 2004 as are included in the Druckexemplar, namely the drawing pages filed on 20 February 2018. Furthermore, the different numbering does not concern the inclusion of pages 8/18 to 18/18, which according to the appellant should have been omitted. Thus, the board holds that there is no discrepancy of any significance between Form 2004 and the Druckexemplar.

1.2 Furthermore, in response to the communication under Rule 71(3) EPC, the appellant approved the text intended for grant (subject to the correction of some minor errors in the description) on 31 January 2019. Hence, the examining division legitimately expected the applicant to have checked and verified the Druckexemplar, in particular since the applicant had requested some amendments to the text intended for grant. The examining division did not have any reason to assume that the approval was based on the prerequisite that only drawing pages 1 to 7 were actually intended for publication.

1.3 According to Article 113(2) EPC, the European Patent Office shall decide upon a European patent application only in the text submitted or agreed by the applicant.

In the present case, the applicant expressly agreed to the text referred to in the communication under Rule 71(3) EPC in its letter dated 31 January 2019. Moreover, the appellant expressly waived its right to the issue of a further communication under Rule 71(3) EPC. Hence, although Rule 71(6) EPC would have allowed the applicant to request further corrections to the communicated text, the appellant did not apparently realise that the documents referred to in the communication under Rule 71(3) EPC did not correspond to the documents in its previous request, i.e. the application documents as amended by its letter dated 20 February 2018.

The board in decision T 1003/19 held that agreement to the communicated text was not decisive, since the applicant had not been notified of the text in which the examining division intended to grant a patent, and only in that case would the provisions of Rule 71(5) EPC have applied.

However, in the board's view, there is no legal basis in the European Patent Convention for a distinction between the text referred to in a communication under Rule 71(3) EPC and that reflecting what the examining division actually intended. Moreover, Rule 71(6) EPC addresses the possibility that the text communicated under Rule 71(3) does not reflect the appellant's requests. In the board's judgement, Article 71(3) EPC thus imposes on the applicant a duty to check and verify this text. The fact that an applicant does not exercise its right to request amendments under Rule 71(6) EPC can therefore only be interpreted as approval of the communicated text, i.e. the text intended for grant. Whether the applicant notices a possible error has no effect on the fact that this approval is binding.

1.4 Consequently, the text referred to in the communication under Rule 71(3) EPC has to be regarded as the text intended for grant. Since this text on the basis of which the patent was granted was approved by the appellant, the requirements of Article 113(2) EPC were met. Thus, the applicant cannot be considered to have been adversely affected by the decision under appeal within the meaning of Article 107 EPC, first sentence.

Accordingly, the appeal filed by the applicant is inadmissible pursuant to Rule 101(1) EPC.

2. Request to refer a question to the Enlarged Board of Appeal

2.1 The question does not warrant a referral to the Enlarged Board of Appeal, since the board has no doubt as to how to answer the question on the basis of the European Patent Convention (see Case Law of the Boards of Appeal, 9th edition, V.B.2.3.2). As explained above, the phrase "text in which it intends to grant" a patent in Rule 71(3) EPC refers to the text as set out in the Druckexemplar, even if this text contains an error by the examining division.

2.2 The board therefore considers that a decision by the Enlarged Board is not required.

Order

For these reasons it is decided that:

1. The request for referral of a question to the Enlarged Board of Appeal is rejected.

2. The appeal is dismissed.