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 already been remedied (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 that the Receiving Section did not grant 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 did not comment on the applicant's argument, 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 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.
• An 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). [update 22.08.2026:  but see T 0110/25]. 
• 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 provisions".

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.

T 1529/20 - Learning about the opposition after your patent is revoked

Key points

• The OD revoked the patent without having received any reply from the proprietor. The proprietor alleges that it had not received the communication under Rule 79 informing it about the filing of an opposition.
• "For the purposes of Rule 126(2) EPC, the present board therefore initiated a postal investigation concerning the delivery of the decision dated 6 April 2020 (parcel number: RD432322983NL), within one year from the date in which the decision was posted. The outcome of the investigation carried out by the responsible service provider was negative, as the postal provider could not track any delivery of the parcel to the addressee, and the parcel had thus to be declared lost. "
• "Since the EPO could not prove whether the registered letter reached the appellant, as required by Rule 126(2) EPC, it must be accepted that the legal fiction of deemed notification did not apply and the appellant became aware of the appealed decision for the first time with the email [*] on 26 June 2020. This date is therefore the date of notification of the decision. "
• * - "The appellant submitted that they had never received the opposition division's decision and that they had become aware of it and more generally of the opposition proceedings only by an email of an employee of the EPO, PA admemp patent FO Team Central Formalities MU, Dir 1.2.5.1 dated 26 June 2020, 6 pm."
• Email is not a valid means of communication. However, irregular notification (e.g. by email) is sufficient, under Rule 125(4), if the EPO can proof the date of receipt of the document.
• The appeal is admissible. The Board finds the course of events to be a violation of the right to be heard and sets aside the OD's decision.
• "The board does not disregard that Rule 126(2) EPC refers to a dispute ("im Zweifel", "en cas de contestation") for the EPO's burden of proof [i.e. only in case of "a dispute"has the EPO the burden of proof of delivery of the document], nor that the mere absence of the advice of delivery or the receipt from the file is not in itself sufficient to give rise to a dispute (see T 247/98, Reasons 2.1 and 2.6). However in this case the appellant when filing the appeal has immediately disputed having received inter alia the communication of the notice of opposition and the communication under Rule 79(1) EPC."
• "even in view of the above mentioned Notice of the European Patent Office dated 16 June 2019 concerning implementation of amended Rule 126(1) EPC (OJ EPO 2019, A57) [abolishing the advice of delivery], the requirements of Article 113 EPC must be complied with, so that before a negative decision revoking a patent is issued, it has to be established that the patent proprietor has been duly informed about the initiation of opposition proceedings."
• The term "advice of delivery" has a rather specific legal meaning, as discussed in G 1/14. 
• "In order to ensure a legally sound notification of the relevant documents, they could have even opted for a notification by public notice [i.e. in the Bulletin] according to Rule 125(2)(d) EPC in conjunction with Rule 129 EPC. The board is aware that under the applicable legal framework it was no longer required to enclose advices of delivery, or that a public notification would not have been required in the present case, because the letter was not returned (Rule 129(1) EPC). However, even if not required by law, nothing prevents the taking of additional measures to ensure legal certainty when there are serious doubts as to whether a procedurally relevant notification, such as the one concerning the notice of opposition, has actually reached the addressee."
• Note, the setup of Rule 129(1) EPC is that notification through the Bulletin requires two notification attempts by registered letter ("has proved to be impossible even after a second attempt") to protect the parties concerned.
• The OD should have noticed that no reply was received from the proprietor and should have checked if the first delivery attempt was succesful.
• A complication is that the proprietor is located in the USA and the representative withdrew during the opposition period before the opposition was filed. However, notification to unrepresented parties outside the EPC contracting states is routine under Rule 160(2) EPC (non-entry into the European phase). 

EPO 

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