J 0011/20 - Correcting the drawings effectively in appeal

Key points

• An application is refused on 17.01.2020 under Art. 90(5) for failure to correct drawings in due time (more details below).
• "as clarified in decision J 18/08 (Reasons 4 and 6), when an application is refused under Article 90(5) EPC, if an appeal is filed against such a refusal, the board of appeal has to examine whether the deficiency noted has been corrected or not. Thus the deficiency on which the decision under Article 90(5) EPC is based can be corrected at the appeal stage."
• J 18/08, issued in 2009, concerned the failure to appoint a professional representative where required. The Board allowed the applicant to repair that deficiency in appeal.
• In the case at hand, the deficiency had been remedied already (the correct drawings were filed). In fact, the Receiving Section had informed the applicant in August 2019 that the correct drawings had been filed late (namely after the period set in the communication informing the applicant about the deficiency). Then, in October, there was a phone call and a request for re-establishment, followed by the Receiving Section issuing in January 2020 a decision refusing the application. The Board concludes that the decision must be 'reversed'. 
• The Board expresses surprise at the Receiving Section not granting interlocutory revision. "The practice of the Receiving Section, based on this procedure and following the cited case law, has been to rectify its decision refusing an application under Article 90(5) EPC, if an appeal is filed and the deficiency is remedied at the appeal instance and to forward the appeal to the boards of appeal as far as the request for reimbursement of the appeal fee is concerned (see also Neumann in Singer, Stauder, Luginb hl, EP , 9th edition 2023, Art. 90, note 59, as well as Ehlers in Benkard, EP , 4th edition 2023, Art. 90, note 130)."
• I don't know what is going on with the Ü.
• In view of the rather strange chronology (deficiency remedied before the filing of the appeal) and the request for re-establishment made before the refusal decision (and again with the appeal), I can see some reasons for not granting interlocutory revision. 
• The Board sees a substantial procedural violation, in that the Receiving Section did not decide at all on the request for re-establishment and in that the Receiving Section had not commented on the argument of the applicant, already presented then, that it had not received the Communication setting the time limit.
• " although the appellant had contested the receipt of the Communication on 24 October 2019 in a timely and formal manner (see point X. above), the Receiving Section made no attempt to initiate a postal investigation, as prescribed by Rule 126(2) EPC. Such investigation would still have been possible at that time, since 7 months had passed from the notification of the Communication (14 March 2019)."
• This pertains to Rule 125(4) EPC. I believe that there is a one year period is for postal investigations for the delivery of registered letters under the Universal Postal Convention.
• "Since the appeal is allowed and the appeal fee to be reimbursed, the request for re-establishment of rights is without object and there is no need to remit the case to the first instance for a decision on it. It also follows that the fees paid twice for the requests for re-establishment of rights were paid without a legal basis and are to be reimbursed."
•  Remarkably, the application was published in September 2020, well after 18 months from the priority date (in November 2017) and somewhere during the course of the appeal. 

The issue with the drawings and Rule 137(1)

• The drawings as filed contained in Fig. 5 some blurry text and, legibly, the words "thermocouple" and gas valve.
• In invitation to correct was sent in December 2018.
• A corrected Figure 5 was filed in February 2018, with legible text, but with the original legible words omitted.
• A communication was issued in March 2019 stating in the first sentence that the amended document was not in agreement with the application document as originally filed.
• This is strange, as simply deleting labels in a figure can hardly violate Article 123(2).
• However, the second sentence states that before receipt of the search report, the drawings may only be amended to the extent sufficient to remedy the deficiencies noted by the Receiving Section.  
• The Board: "as can be seen from the reference to Rules 137(1) and 58 EPC in the Communication, the Receiving Section raised an objection under these provision".

Ex nunc examination only in appeal

• "The deficiency having been remedied late and no means of redress having been filed, the Receiving Section was empowered to issue the refusal decision at expiry of the time limit given under Rule 58 EPC (see in particular J 1/18, Reasons 5)."
• It seems the appeal against a decision under Article 90(5) functions like an expensive kind of further processing. Re-establishment is the cheaper remedy but is less certain. 

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/j200011eu1

16. According to this procedure, as clarified in decision

J 18/08 (Reasons 4 and 6), when an application is refused under Article 90(5) EPC, if an appeal is filed against such a refusal, the board of appeal has to examine whether the deficiency noted has been corrected or not. Thus the deficiency on which the decision under Article 90(5) EPC is based can be corrected at the appeal stage. In application of this procedure in

J 18/08 the Board considered allowable the correction on appeal of the missing appointment of a professional representative.

16.1 The situation differs from the one where the non-observance of a time limit automatically leads to the application being deemed to be withdrawn, so that the legal consequence automatically ensues when an act required within a specific time limit is not performed, without any decision to be taken concerning the refusal of the application (Rule 112(1) EPC). Under this procedure, deficiencies cannot be corrected, but result in the re-examination of the loss of rights communication (see also J 18/08, Reasons 5).

16.2 The practice of the Receiving Section, based on this procedure and following the cited case law, has been to rectify its decision refusing an application under Article 90(5) EPC, if an appeal is filed and the deficiency is remedied at the appeal instance and to forward the appeal to the boards of appeal as far as the request for reimbursement of the appeal fee is concerned (see also Neumann in Singer, Stauder, Luginb hl, EP , 9th edition 2023, Art. 90, note 59, as well as Ehlers in Benkard, EP , 4th edition 2023, Art. 90, note 130).

16.3 This practice has also been endorsed by the later case law.

16.4 In J 11/15 and J 1/18, both cases concerning a deficiency of the drawings in the application as filed, the Board confirmed that the Receiving Section correctly rectified its decision to refuse the application pursuant to Article 109 EPC, as the deficiency had been remedied on appeal. It also confirmed that no justification was present for reimbursing the appeal fee, in the absence of any procedural violation by the Receiving Section (see

J 11/15, Reasons, third paragraph, and

J 1/18, Reasons 5 and 6). The deficiency having been remedied late and no means of redress having been filed, the Receiving Section was empowered to issue the refusal decision at expiry of the time limit given under Rule 58 EPC (see in particular J 1/18, Reasons 5).

Similar conclusions were reached in J 8/13, in which the deficiency related to the size of the characters of the application documents according to Rule 49(8) EPC.

17. In the present case, at the time the appeal was filed, the deficiency had already been remedied, albeit late, with the filing of the correct drawings on 10 July 2019. Thus, the ground for refusal of the application had been remedied.

17.1 Therefore, the Receiving Section should have actually granted interlocutory revision in accordance with Article 109 EPC.

17.2 The Board cannot see any reasons why in the present case the procedure and the established practice of granting interlocutory revision was not followed and for this reason alone the decision under appeal is to be set aside and the refusal of the application must be reversed.

18. In addition, other than in the above mentioned cases, the appellant had also filed a further means of redress for re-establishment of rights on 24 October 2019 before the appealed decision was issued (see point X. above). In that request the appellant submitted reasons for the late correction of the deficiency, in particular it was contested that the Communication had been received by the appellant (point 2. of the third page of the request for re-establishment of rights).

The same objection was submitted in reply to the Receiving Section's communication under Article 113(1) EPC inviting the appellant to provide their comments (see letter of 24 October 2019, point 3. of the first page and point 2. of the second page of the reply).

However, no consideration was given to this fundamental fact, on which the Receiving Section based the decision to refuse the application. Indeed the request for re-establishment of rights was not considered at all.

19. In view of the conclusion drawn above, the Board does not need to address whether these facts provide a further reason for setting the appealed decision aside. However, proper consideration is to be given when addressing whether a substantial procedural violation was committed, which would justify reimbursement of the appeal fee.

Reimbursement of the appeal fee

20. According to Rule 103(1)(a) EPC, reimbursement of the appeal fee shall be ordered where the board of appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation. A substantial procedural violation is an objective deficiency affecting the entire proceedings in the sense that the rules of procedure have not been applied in the manner prescribed in the EPC to the detriment of a party (see e.g. J 7/83, Reasons 12;

T 12/03, Reasons 4.2).

21. In the present case, the appellant based their request for reimbursement in essence on several allegations: firstly that the Communication appeared not to have been received by the appellant, secondly that the Communication exceeded the competences of the Receiving Section, thirdly that information on a procedural non-compliance leading to a severe loss of rights had been given to an assistant by means of an informal telephone call, and finally that the decision to refuse the application was issued despite all these arguments had already been brought to the attention of the Receiving Section in reply to the communication under

Article 113(1) EPC.

22. The Board concurs with the case law mentioned above according to which if a deficiency is remedied late, i.e. after expiry of the time limit given under Rule 58 EPC, refusal of the application is justified and can only be rectified by means of appeal. Under such circumstances reimbursement of the appeal fee is not equitable, in the absence of substantial procedural violation.

23. However, in the present case, the Board sees at least a substantial procedural violation in the fact that the Receiving Section disregarded the objection of lack of receipt of the Communication, and gave no consideration to the request for re-establishment of rights.

The lack of receipt of the Communication had been disputed by the appellant - in addition to the statement of grounds of appeal - before the appealed decision was issued, both in the request for re-establishment of rights and in reply to the communication under Article 113(1) EPC.

24. In the event of any dispute concerning the delivery of a document, the EPC provides that it is incumbent on the EPO to establish that the document has reached its destination and to establish the date on which the document was delivered to the addressee (Rule 126(2) EPC, both as applicable at the relevant time and in the current version as applicable from 1 November 2023).

25. The Board does not disregard that according to the file, in particular upon consideration of the telephone note dated 5 July 2019 (see point VI. above), during which the assistant of the appellant's representative apparently gave the information that the Communication had actually been received, there was at least uncertainty on this fact.

26. In the Receiving Section's communication under Article 113(1) EPC, by reference to the telephone conversation, the assumption that the Communication had actually been received by the professional representative is taken as a given fact. However there is no trace in the file that this telephone note had also been formally notified to the professional representative, giving him the chance to take position on this fact before it being taken into account in the communication under Article 113(1) EPC.

27. In addition, although the appellant had contested the receipt of the Communication on 24 October 2019 in a timely and formal manner (see point X. above), the Receiving Section made no attempt to initiate a postal investigation, as prescribed by Rule 126(2) EPC. Such investigation would still have been possible at that time, since 7 months had passed from the notification of the Communication (14 March 2019).

28. By simply disregarding the appellant's submissions, the Receiving Section violated the right to be heard under Article 113(1) EPC. It is a well established principle that this right requires not only than an opportunity to present comments is given, but also that these comments are actually taken into due consideration in the decision (see Case Law of the Boards of Appeal of the EPO, 10**(th) edition, 2022, III.B.2.4.2).

This violation is of a substantial nature since it affected the reasons on which the appealed decision was taken, namely the assumption that the Communication was received by the appellant and thus the deficiencies under Rule 58 EPC were not corrected in due time (see point XII. above). The appellant was given no other choice than filing the appeal.

29. In view of these circumstances, the Board considers that reimbursement of the appeal fee is equitable.

30. Since the appeal is allowed and the appeal fee to be reimbursed, the request for re-establishment of rights is without object and there is no need to remit the case to the first instance for a decision on it. It also follows that the fees paid twice for the requests for re-establishment of rights were paid without a legal basis and are to be reimbursed.

Conclusion

31. In view of the above considerations the Board decides to set the appealed decision aside, to remit the case to the department of first instance for continuation of the proceedings and to order reimbursement of the appeal fee and of the fees paid for re-establishment of rights.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.

3. The appeal fee and the fees for the request for re-establishment of rights are reimbursed.