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

1.1 It is undisputed that the application as filed was defective in a number of ways, most notably that its description was not in compliance with Rule 42 (1)(c) EPC that requires that the description must mention the technical problem and solution of the invention. Since the "invention" as pursued by the Appellant is the one as defined in the claims, the description neither set out the problem nor the solution to this invention. It can be left open whether under these circumstances a filing date should have been accorded to this invention under Art. 90 EPC (allocation of a filing date) that refers to Art. 78 EPC (requirements of a European application) which in turn refers back to Rule 42 EPC.

1.2 The question is rather whether the Appellant was entitled to substitute the originally filed description with a different one. The Appellant in this regard supplied the legal opinion (D5) by Rudolf Teschemacher according to whom this is possible: "...if a claim clearly discloses subject-matter which is not mentioned in the description, it is permissible to amend the description so that it includes this subject matter... This is exactly what the applicants have done in this case..." (D5, paragraph B.6).

1.3 Two avenues have been pursued by applicants in order to substitute a complete description. The first under Rule 139 (formerly Rule 88) EPC (correction of errors), the second under Rule 56 EPC (missing parts of description and drawings).

1.4 Decision G 2/95 (OJ EPO 1996, 555) decided that the complete application data could not be replaced under Rule 139 EPC. Decision J 16/13 of 22 May 2014 held that this equally applied to the exchange of a description:

"18. At the oral proceedings the appellant argued that the cited decisions of the Enlarged Board of Appeal were not applicable to the present case, given that G 2/95 and J 5/06 concerned cases where the whole application, and not only a part of it, had to be exchanged. However, the Board holds that the ratio decidendi of these decisions is fully applicable to all cases where at least a complete description is sought to be exchanged. This follows from the principle outlined above that the filing date is inseparable from the description, since it is obvious that allowing an exchange of "only" the description by way of correction would directly result in the separation of the filing date from the description."

The reason for this is simply that in light of the infinite possibilities of drafting a description, it is not obvious to a skilled person how an amended description should look like. In the current case, it may not even have been obvious to a skilled person which invention (the one disclosed in the description, or the one disclosed in the claims) the applicant intended to pursue.

1.5 As also discussed in decision J 16/13 (point 22), Rule 56 EPC allows an applicant to supply missing parts of the description after the application has been filed. In case these missing parts have been contained in the priority application, the original filing date can be retained under certain circumstances (Rule 56(3) EPC). Where such missing parts were not contained in the priority application, the filing date will be shifted to the date where such missing parts were filed (Rule 56 (2) EPC). However, in the present case nothing turns on this, as the Appellant has not merely supplied "missing parts of the description", but a new description in toto.

1.6 Decision J 27/10 was faced with a comparable situation as the current one, namely a request that an originally filed description be replaced by another one. The Board held that this was not allowable:

"2. As regards the appellant's main request, Rule 56 EPC is the relevant provision which most closely corresponds to the provisions of Article 5(6) of the Patent Law Treaty (PLT). Rule 56 EPC was introduced after the Revision of the EPC (EPC 2000) (see decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the EPC 2000 (Special edition No. 1, OJ EPO 2007, 89)) and entered into force on 13 December 2007 (see Article 3 of said decision of the Administrative Council).

3. Article 90(1) EPC provides that the EPO examines, in accordance with the Implementing Regulations to the EPC, whether the application satisfies the requirements for the accordance of a date of filing.

If the examination under Article 90(1) EPC reveals that parts of the description, or drawings referred to in the description or in the claims, appear to be missing, the EPO shall invite the applicant to file the missing parts within two months (Rule 56(1), first sentence, EPC).

4. It is not literally stipulated in Rule 56 EPC, that the applicant may also file of his own motion missing parts of the description or missing drawings (i.e. without being invited to do so by the EPO). However, Rule 56(2), first sentence, EPC, reads:

"If missing parts of the description or missing drawings are filed later than the date of filing, but within two months of the date of filing or, if a communication is issued under paragraph 1, within two months of that communication, the application shall be re-dated to the date on which the missing parts of the description or missing drawings were filed."

From this wording it is clear that the applicant may also file of his own motion missing parts of the description or missing drawings. This approach is in line with the intention of the legislator (see travaux préparatoires, CA/PL 5/02, 18 June 2002, Explanatory remarks, page 12 regarding Rule 39a EPC (which is the former provision of Rule 56 EPC in the travaux préparatoires)). The board also notes that this approach is reflected in the instructions to the EPO (see Guidelines for Examination in the EPO, April 2010, A-Chapter II, 5.2).

....

9. Neither the EPC nor the travaux préparatoires concerning Rule 56 EPC (or former Rule 39a EPC) contain a definition of the term "missing parts of the description". Therefore, this term must be construed.

10. The board considers that the same interpretation is to be given to the term "parts of the description ... appear to be missing" in Rule 56(1), first sentence, EPC as to the term "missing parts of the description" in the subsequent paragraphs of Rule 56 EPC for deciding if a part is missing from the description. This term is also used in the title of the whole provision. The board also considers that the terms "missing parts of the description", "Fehlende Teile der Beschreibung" and "Parties manquantes de la description" have the same meaning in all three language versions.

11. In the board's understanding the term "description" in "missing parts of the description" refers to the description which was originally filed in order to obtain a filing date and not to any other description, such as, for example, the one the appellant actually intended to file or the description of a priority application. In its literal sense the term "missing parts of the description" indicates that some parts of the description are missing or absent but other parts of it have been filed. From this the board concludes that the incomplete originally filed description is to be completed by the missing parts which must be added to the already filed text of the description.

12. Thus an interpretation of Rule 56 EPC that some, or all, of the description that was originally filed in order to obtain a filing date could be amended, replaced or deleted is incorrect."

1.7 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).

1.8 The Appellant also invited the Board to liken the current case to one where two inventions were claimed in the same application that subsequently due to a lack of unity had to be pursued separately. The difference with the present case is, however, that in such latter case a complete description exists already for both inventions and the problem of replacing a description with a different one does not arise.

1.9 It results thus from the above that the provisions of the EPC do not allow the replacement in toto of an original description with a different one.

1.10 As all requests filed by the Appellant rely on the amended description as filed with the main request, it follows from the above that the Appellant's request to obtain a patent on the basis of the replaced description must be refused as non-compliant with Rules 139 and 56 EPC.