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.
