T 1224/24 - When the EPO forgets the drawings and the proprietor notices in time

Key points

• The appeal lies from the decision of the examining division to grant a European patent on the basis of the application documents indicated in the communication under Rule 71(3) EPC dated 13 December 2023.
• The appeal was filed on 03.07.2024. The DTG was dated 03.05.2024. The mention of the grant was 29.05.2024.
• The Board: "The appeal is admissible since the appellant is adversely affected by the omission of 48 out of 52 drawings in the decision to grant. The granted version of the patent corresponds neither to the text submitted by the applicant, nor to a text agreed upon or deemed approved by the applicant." 
• "A review of the file history reveals that while several versions of the description and claims were submitted by the applicant on 16 September 2021, 2 August 2022, 10 August 2022, and 13 September 2023, the figures or drawing sheets were never amended or partially withdrawn. This indicates that the drawings forming part of the applicant's request for grant were those filed with the request for entry into the European phase-namely, the original drawing sheets 1/52, 2/52, 4/52 to 27/52, 29/52 to 36/52, 38/52, 39/52, and 41/52 to 52/52, along with the amended drawing sheets 3/52, 28/52, 37/52, and 40/52, which were submitted on 27 September 2020 upon entry into the European phase. All these drawings were correctly published in the A1 application."
• "The communication under Rule 71(3) EPC dated 13 December 2023 proposed amendments to the description and to claim 1 but did not indicate that the text intended for grant differed from the applicant's request regarding the drawings. Furthermore, no prior communication from the examining division proposed amendments to the drawings filed by the applicant, or contained any comments on them. All communications stated that, for the figures, the examination was carried out on the amended drawing sheets 1/4-4/4 as filed upon entry into the regional phase before the EPO. However, the file contains no explicit approval from the applicant for the removal of the remaining 48 originally filed drawings. It appears that neither the members of the examining division nor the appellant realized that the original drawing sheets 1/52, 2/52, 4/52 to 27/52, 29/52 to 36/52, 38/52, 39/52 and 41/52 to 52/52 were omitted and only the amended drawing sheets 3/52, 28/52, 37/52 - renumbered 1/4- 4/4 - were considered by the examining division."
• " In accordance with T 1003/19 (catchword and point 2.4 of the reasons), T 1823/23 (point 1.9 of the reasons), T 2081/16 (point 1.4 of the reasons), the Board considers that the legal consequence set out in Rule 71(5) EPC can only apply if the communication under Rule 71(3) EPC reflects the examining division's intention regarding the application documents on which the patent is to be granted."
• "Under normal circumstances, it can be assumed that the text referred to in a communication under Rule 71(3) EPC reflects the examining division's intention regarding the text on which the patent is to be granted. However, this is not the case when objective elements in the communication and/or in the text annexed to the it, such as significant discrepancies between the communication and the "Druckexemplar", or within the "Druckexemplar" itself, clearly indicate that the text does not correspond to the examining division's intention (see T 1003/19, points 2.4.3 and 2.4.4)."
• "  the Board concludes in the present case that neither the documents referred to in Form 2004C nor the "Druckexemplar" reflected the text in which the examining division intended to grant the patent. Hence the text communicated to the applicant with the communication of 13 December 2023 did not correspond to the text intended for grant under Rule 71(3) EPC."
• " If the applicant is not communicated the text intended for grant under Rule 71(3) EPC, the legal consequence outlined in Rule 71(5) EPC does not apply. Therefore, the applicant's subsequent filing of translations and payment of fees for grant and publishing do not imply approval of the communicated text."
• " A decision to grant under Article 97(1) EPC, based on a text that was neither submitted nor agreed upon by the applicant, as is this case (see points 1.1- 1.11 above), does not comply with Article 113(2) EPC. Therefore, the decision under appeal is to be set aside."
• " the board considers that the present decision does not deviate from G 1/10, which determined that Rule 140 EPC cannot be used to correct the text of a patent, but did not concern the interpretation of Rule 71 (5) EPC. Therefore, Article 21 RPBA does not apply. The Board fully agrees with and refers to the reasoning in T 2081/16 (point 3) and T 1003/19 (point 4)."

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t241224eu1