T 0423/21 - When the EPO forgets the drawings

 Key points

• This applicant reaps the bitter fruits of  G 1/10 (in other words, the present case illustrates the harsh consequences of the Boards' current interpretation of G 1/10. 
• The PCT application was filed with drawings (18 pages) and had the drawings in the WO publication in 2013. 
• The PCT Pamphlet  (WO publication WO2013184830) is not included in the EPO's online file wrapper. 
• Why is unclear to me. The WO publication is usually included in the EPO online file, see e.g. this case. 
• Hence, we cannot see what the EPO received (or obtained) from the IB / WIPO as the PCT application in 2014. Does any of the readers know more about this? 
• Amended claims and an amended description are filed in the prosecution.
• The Rule 71(3) Communication does not include the drawings: they are not part of the Druckexemplar (the "Text intended for grant (version for approval")  in the online file, nor are they listed in Form 2004, i.e. the form that is the basic part of the Rule 71(3) communication). Nothing is said about the drawings in Form 2004: some amendments by the EPO are listed, but nothing about the drawings. 
• The patent is granted on 8 May 2019 (the date of the publication of the mention of the grant). The decision to grant is dated 11.04.2019.
• The applicant files a request for a correction on 23.07.2019. 
• The Board does not grant any remedy. The B1 publication corresponded to the Druckexemplar. The request for a correction under Rule 140 is refused, referring to G 1/10.
• "As it is the applicant's duty to properly check all the documents making up the communication under Rule 71(3) EPC (i.e. Form 2004 and the Druckexemplar), the responsibility for any errors remaining after grant are his alone, whether the error was made (or introduced) by him or by the examining division."
• The request under Rule 139 is also refused.
• Perhaps an appeal against the decision to grant in combination with a request for re-establishment could have been tried, but that procedure was ruled out by the recent decision T 0178/23. 
• Of course, decisions of the Enlarged Board are not carved in stone (see G3/19 point xx), so a referral could have been requested. G1/10 was about a change of a typographic error in the claims. It is not about the EPO losing parts of the application, in other words, ummarked amendments by the EPO of the application.
• Finally, possibly the error by the EPO can be treated as a correctable formatting error: H-VI,4: "Formatting/editing errors are alterations in the patent documents which occur during the preparation of the Druckexemplar and which are indicated neither by standard marks nor in Form 2004." (also in the 2019 edition). The decision of the Examining Division does not refer to this specific paragraph of the Guidelines. 
• The example in the Guidelines of a "formatting/editing error" refers to "the two top lines" in a page that "have just disappeared" from the Druckexamplar without editing marks in the Druckexmplar and without an indication on Form 2004). This can be corrected, according to the GL.
• Given that the letters in the Druckexamplar don't have little legs, the example in the GL  actually refers to the EPO's software deleting or omitting the two sentences during the preparation by the Druckexmplare (in fact, the example mentions that there are other, marked, edits by the Examining Divisio on the same page). 
• I don't see a size limit in the GL's definition of "Formatting/editing errors are alterations in the patent documents which occur during the preparation of the Druckexemplar and which are indicated neither by standard marks nor in Form 2004", i.e. no limit to alterations of less than three lines, and no exclusion of alterations in the drawings. 
• There could be possible reasons why the remedy of H-VI,4 is not applicable, but as the present  decision is not concerned with that remedy, there is no need to speculate on any possible obstacles. 
• The Board does not comment on the procedure of GL H-VI,4, so nothing in the present decision is a problem for that remedy. 

https://www.epo.org/en/boards-of-appeal/decisions/t210423eu1