T 1823/23 - Dropping the drawings in the Rule 71(3)

Key points

• "The communication under Rule 71(3) EPC however referred to the description and the claims but not to the drawings."
• The applicant realizes the error only after the grant and files a timely appeal.
• "In the present case, the documents indicated in the communication under Rule 71(3) EPC are however manifestly not in line with those resulting from the examination of the request on file, because the drawings formed part of the application as filed but were never withdrawn by the (now) appellant, and only the claims and the description were objected to by the examining division and amended by the appellant, but not the drawings."
  
• "In the case at issue, the communication under Rule 71(3) EPC does not contain any hint that any deletion or amendment were made by the examining division to the drawing sheets. There is thus a clear discrepancy between the description referring to the Figures and the absence of any drawing sheets in the text intended for grant, which should have been remarked upon by the examining division when allegedly deleting the drawing sheets, but apparently neither the members of the examining division nor the (now) appellant realised that the drawing sheets were missing and that the documents referred to in the communication pursuant to Rule 71(3) EPC did not correspond to those according to the appellant's request, which included the drawing sheets. Therefore, in line with decisions T 1003/19 and T 408/21, the board concludes that the examining division did not indicate in the communication according to Rule 71(3) EPC the text it intended to grant"
• "The examining division therefore did not communicate the text that it intended to grant. Following T 2081/16 (point 1.4.5 of the Reasons), T 408/21 (point 1.12 of the Reasons) and T 1003/19 (point 2.4.5 of the Reasons), Rule 71(5) EPC correspondingly does not apply, as in the step preceding the deemed approval the applicant has to be informed of the text in which the examining division intends to grant the patent according to Rule 71(3) EPC. Although the (then) applicant received a Rule 71(3) EPC communication, the documents indicated were not those which the examining division intended to grant."
• The appeal is allowable.
• "The fact that a narrow interpretation of Rule 71(3) and (5) EPC as proposed by the present board allows for an appeal to be treated as admissible should however not be misinterpreted as an invitation to neglect the applicant's duty to carefully check the documents submitted in the text intended for grant sent with the communication under Rule 71(3) EPC. The request for reimbursement of the appeal fee is therefore rejected."
• "The present board is aware of decision T 265/20"

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

T 0222/21 - Rule 71(6) and Rule 137(3)

Key points

• The applicant filed amended claims under Rule 71(6) EPC. The ED did not admit these requests under Rule 137(3) EPC.
• The Board: “It follows from points H-II, 2.4 and H-II, 2.5.1 read in conjunction, correctly in the Board's view, that what matters for the exercise of the discretion to admit or not to admit [amended claims under Rule 71(6) EPC], if the text was "extensively revised", is the content of the amendments and the consequential amount of time for examination that the amendments prima facie require. It is this amount of time that determines whether the amendments are extensive. The Board is of the view that, for instance, where a request is prima facie allowable, the amount of time needed will generally be quite limited so that the amendments will not appreciably delay the preparations for grant of the patent. Admittance of the request into the proceedings under Rule 137(3) EPC may then be justified. On the other hand, if an Examining Division comes to the conclusion that a request is not prima facie allowable but introduces new deficiencies, it is justified for the division to refuse the request under Rule 137(3) EPC (cf. T 1399/10, point 1.3, of this Board in a different composition).”
• The ED had not considered the factor of prima facie allowability. The impugned decision is set aside and the case is remitted to the ED to decide on the admissibility of the amended claims.

T 0222/21 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t210222eu1.html

Reasons for the Decision

1. In the decision under appeal the Examining Division stated that it decided not to admit the Main Request dated 11 October 2018 under Rule 137(3) EPC. It exercised its discretion under Rule 137(3) as it did not consent to the amendments filed by the applicant in accordance with Rules 71(3) and 71(6) EPC.

2. The Board notes that, in response to a communication pursuant to Rules 70(2) and 70a(2) EPC dated 24 April 2014, with a letter dated 4 November 2014, the applicant filed amendments and requested further examination on the basis thereof. This was in line with Rule 137(2) EPC. Subsequently, in a response of 10 April 2018 to a telephone consultation with the examiner of 2 October 2017, the applicant requested further examination on the basis of another amended set of claims.

T 0646/20 - Addition of further designated states after grant (no)

 Key points

• “This is a case where the patentee appeals against the grant of its own patent. Most of the arguments revolve around the question of whether the patentee was adversely affected by such grant, but also around questions on the interpretation of the remedy of "further processing" under Art. 121 EPC.”
• “European patent application 07747361 [] was filed on 2 April 2007, that is, before the EPC 2000 came into force on 13 December 2007. Under the EPC 1973, EPC Member States had to be designated individually, and a designation fee for each Member State had to be paid. In the present case, designation fees for five Member States (DE, DK, ES, GB and PT) were paid, but not for the others. [] In regard of the other Member States and Extension States, a "noting of loss of rights pursuant to Rule 112(1) EPC" (in the following "Notification") was sent to the applicant's representative on 5 December 2008. ... The appellant states that the Notification was never received, which the Board under Rule 125 (4) EPC has to accept in the absence of any proof to the contrary.”
• “On 4 July 2019, the Office issued the decision to grant (now subject to appeal) that indicated 31 July as the date when the decision to grant would be published in the European Patent Bulletin. On the very day of 31 July 2019, the applicant filed a request for further processing in regard of the loss of rights for the remaining EPC Member States and Extension States communicated in the Notification of 2008, but not received by the applicant. With this request, the applicant filed the corresponding fee for further processing and the designation fees for the remainder of the EPC Member States and Extension States. Against the decision to grant, the appellant on 12 September 2019 filed a notice of appeal, paid the appeal fee on the same day and supplied the reasons on 13 November 2019.”
• The question is whether the appeal is admissible, in particular, whether the appellant is adversely affected. The Board finds that the appellant is not adversely affected by the decision to grant because it had paid the grant fee; according to the Board this includes approval of the designated states intended in the Druckexemplar
• The issue is not entirely clear to me. Rule 71(3) in the version applicable between 01.04.2009 and 31.03.2012 read "he shall be deemed to have approved the text intended for grant."  (OJ 2008 p.513). However, Rule 71(5) in the version in force since 2012 reads "he shall be deemed to have approved the text communicated to him under paragraph 3 and verified the bibliographic data" (OJ 2010 p.637). The intention to grant under Rule 71(3) was issued in April 2019 in the present case.
• The appellant argues that further processing was still available, the 2008 Notice of loss of rights never having been properly notified. “Not least in light of the appellant's argument that the availability of the remedy of further processing at the time the decision was rendered constituted an adverse effect (quod non), the Board finds it appropriate to address this issue.”
• “The Board accepts that the remedy of further processing does not require a pending application at the time the request is filed. But already the term "further processing of an application" indicates that it requires an application. An application that is deemed withdrawn can return to the stage of a pending application once the request for further processing is successful, but an application that has been granted cannot. An application that has turned into a granted patent cannot be further processed as an application”
• “Given the Board's interpretation of an applicant's approval in response to a communication under Rule 71(3), the Board further observes that even in the absence of receiving the Notification of loss of rights, the two-months period as specified in Rule 135 EPC should commence from the date of the Communication [under Rule 71(3) EPC]. This was the point in time when it fell on the applicant to check the complete file of its application at least in regard of the text and designated Member States mentioned in the Communication, and thus the point in time when the applicant should have had constructive knowledge of the designation of five Member States and the failure to designate the others. ”
• “Only in passing, the Board observes that the notification of a loss of rights under Rule 112(1) EPC is a "voluntary service" of the EPO (Case Law, 9**(th) ed. 2019, III.K.4.1), and the Board has some reservations as to whether the lack of receipt of such notice can indeed allow the applicant to request further processing even years after such notification has been dispatched.”
• I'm not sure if CLBA III.K.4.1 is very helpful on this point, as it seems to summarize J7/92 regarding renewal fees and re-establishment after failure to pay with surcharge. It would be rather strange if the EPO would not send out a Notice of loss of rights for cases where further processing is available.
• In my view, the EPO should docket a check for confirmation of receipt and if no confirmation is obtained, proceed with public notification under Rule 129 EPC (after the second attempt under current Rule 129 EPC. 
  
  
• As a bit of nit-picking, the usual phrasing is Contracting States of the EPC (not Member States). Moreover, for extension states, extension fees must be paid (not designation fees). Further, on the EPO website, the decision was given the catchword "Addition of further Designation States after grant", probably 'Designated States' was intended. Finally, the old designation fee system also applies for European applications filed between 13.12.2007 (entry into force of the EPC 2000) and 01.04.2009, see the current text of Rfees2(2). Nevertheless, it is correct that the application at issue was filed after the entry into force of EPC 2000 and that “Under the EPC 1973, EPC [Contracting States] had to be designated individually, and a designation fee for each [Contracting] State had to be paid.”

T 0646/20

https://www.epo.org/law-practice/case-law-appeals/recent/t200646eu1.html

Reasons for the Decision

1. Admissibility of the Appeal

1.1 It is good law that in order to correct the designation of Member States in a decision to grant, the only available remedy is to file an appeal against such decision (decision T 493/08 of 29 September 2009, point 6.2.1 of the reasons). Yet in order to file an appeal under Art. 107 EPC, the appellant must be adversely affected. This is questionable in a case where the applicant has approved the text intended for grant and the corresponding bibliographical data as set out in the Communication. The Enlarged Board of Appeal has so held in a case where the applicant after having approved the text intended for grant appealed against the decision to grant in order to obtain a correction of the granted patent (decision G 1/10 published in OJ 2013, 194).

T 0265/20 - Granted as is

Key points

• All the drawings were lacking in the Rule 71(3) Communication. The applicant didn't notice, paid the appeal grant fee and filed the translated claims, and filed the present appeal after the grant.
• The present Board 3.5.05 does not follow T 1003/19 (Board 3.3.05) and T 2081/16 ( Board 3.5.03), instead follows T 2277/19 (Board 3.2.02) and more or less says "too bad but the appeal is not allowable under the 'deemed approval' of Rule 71(5)".
• “This binding effect does not appear unjust or unbalanced. It may reasonably be expected that the applicant reads the communicated text thoroughly and verifies that the text is the one it expects it to be before approving it by paying the fee and filing translations. ”
• Present decision in the headnote: “ It is not the content of the text intended for grant which triggers the deemed approval under Rule 71(5) EPC, but rather the applicant paying the fee for grant and publishing and filing the translations according to Rule 71(5) EPC. Thus the "true will" of the members of the examining division when editing the communication pursuant to Rule 71(3) EPC is of no relevance” 
• The Board considers the appeal to be admissible, unlike T 2277/19, stating that the facts are different. 
• The Board: “The facts of the case at hand differ [from T 2277/19]  in that no drawings at all, neither the requested ones nor any others, were included in the text communicated to the appellant under Rule 71(3) EPC and the Druckexemplar, and in that no explicit approval was given, but the approval was rather deemed to have been given. Thus, there is no diverging case law and consequently no need to refer the case to the Enlarged Board of Appeal.”
• The Board does not refer questions to the Enlarged Board regarding the allowability of the appeal. 
• The online file shows that the publication of the mention of the grant was cancelled (Bulletin 2020/48, p.4547) and indeed the status is 'Grant of patent is intended' as of 31.10.20 in the online Register. I assume that in due time a new mention of the grant will be published. A divisional application has already been filed, which is hence filed before the date of the effective publication of the mention of the grant.
• Addition 13-08-2025: T 265/20 should be seen as an isolated decision, not followed by the later case law. See T387/25.

EPO T 0265/20 - link 

Reasons for the Decision

1. The appeal is admissible.

1.1 According to Article 107 EPC, first sentence, any party to the proceedings adversely affected by a decision may appeal.

1.2 The board acknowledges that the appellant is adversely affected in the case at hand by the discrepancy between the appellant's explicit request in the examination proceedings for the grant of a patent and the content of the B1 publication. The impugned decision did not include drawing sheets 1/4 to 4/4, and thus the B1 publication lacks these drawing sheets, which is clearly less than what was requested by the appellant. The fact that all of the drawing sheets were missing is sufficient in the present case to assume that the appellant was adversely affected by the impugned decision, irrespective of why they are missing and how the legal framework of Rule 71 EPC has to be interpreted.

T 2277/19 - You get what you (don't) see

Key points

• This concerns a patentee appealing against the grant because after the grant he realized that the Druckexemplar is not the version that he thought would be granted.
• Board 3.2.02  does not follow T 1003/19 (Board 3.3.05) and T 2081/16 ( Board 3.5.03).
• The present Board: “in the board's view, there is no legal basis in the European Patent Convention for a distinction between the text referred to in a communication under Rule 71(3) EPC and that reflecting what the examining division actually intended. Moreover, Rule 71(6) EPC addresses the possibility that the text communicated under Rule 71(3) does not reflect the appellant's requests. In the board's judgement, Article 71(3) EPC thus imposes on the applicant a duty to check and verify this text. The fact that an applicant does not exercise its right to request amendments under Rule 71(6) EPC can therefore only be interpreted as approval of the communicated text, i.e. the text intended for grant. Whether the applicant notices a possible error has no effect on the fact that this approval is binding.”
• The Board refuses to refer questions to the Enlarged Board of Appeal: “The question does not warrant a referral to the Enlarged Board of Appeal, since the board has no doubt as to how to answer the question on the basis of the European Patent Convention”. 
• I note that the issue with the Druckexemplar present application appears to be a case of ‘unmarked Examiner's amendments’  in the Rule 71(3) Communication. I realize that ‘Examiner's amendments’ is USA terminology; for the EPO ‘amendments by the examining division of own motion’ is more appropriate. Though I suspect that it actually boils down to hiccups in the software systems used by the EPO in the preparation of the electronic Druckexemplar, in the sense that the Examiner does not forget to include changes he makes in the ‘special field provided at the bottom of page 1 of Form 2004C’, but rather that somehow pages are deleted or reinstated in the eDREX without any person in the EPO consciously taking an action to that effect.
• One may also ask whether the ‘the text communicated to him’ of Rule 71(5) is affected by a content of the "special field provided at the bottom of page 1 of Form 2004C" that is inconsistent with the Druckexemplar as included in the Rule 71(3) Communication.
• The principle of good faith may possibly require that, since the EPO provides a "special field at the bottom of page 1 of Form 2004C" for mentioning any amendments made by the examining division in the Rule 71(3) EPC Communication, the EPO actually uses that field, such that the applicant has a legitimate expectation that there are no further amendments than those mentioned in that field (i.e. if the field is empty, there are no amendments made by the EPO). Possibly an appeal against a grant can be used to invoke the protection of such legitimate expectations. 
• I use the opportunity to highlight that the marked-up text intended for grant is included in the Rule 71(3) Communication. The clean copy version is only placed in the (public) file. 

EPO T 2277/19 -  link

Reasons for the Decision

1. Admissibility of the appeal

Article 107 EPC, first sentence reads as follows: "Any party to proceedings adversely affected by a decision may appeal." It follows from this sentence that the appeal proceedings are open only to a party which has been adversely affected by the impugned decision.

In the present case, the appeal is not admissible since the appellant is not adversely affected by the decision to grant.

T 0816/19 - Obiter and right to be heard

Key points

• In this examination appeal, the applicant only argues that the refusal decision is to be set aside due to substantial procedural violations committed by the ED.
• “The appellant essentially argues that the Examining Division was wrong in: (a) failing to send a second communication under Article 94(3) EPC; and (b) proposing the grant of a patent based on inappropriate amendments without prior consultation with the applicant.”
• The Board notes that a failure to send a second Communication is itself not a violation of Art. 113(1) EPC. For showing the latter, “the appellant would need to provide a convincing argument why the decision to refuse the application was based on grounds or evidence on which it had no opportunity to present its comments.”
• The Board notes that issuing a second Communication under Article 94(3) EPC is not necessary if the ED can issue a Rule 71(3) Intention to grant with Examiner's amendments.
• The Examiner's amendments in the Rule 71(3) Intention to grant were rather limiting. However, this is not a substantial procedural violation: “a proposal for amendment made in a communication under Rule 71(3) EPC, even if the amendments may be judged inappropriate, does not, by itself, constitute a fundamental deficiency in the proceedings within the meaning of Article 11 RPBA.”
• The ED refused the application on the ground of clarity, with remarks about inventive step under the heading "Obiter dictum".
• “By explicitly using the title "Obiter dictum" (i.e. "that which is said in passing") the Examining Division made it clear that the statements made under this heading merely reflected its opinions on certain matters and did not represent the reasons for the decision (i.e. the ratio decidendi). Article 113(1) EPC only gives a right to be heard on grounds or evidence on which a decision of the European Patent Office is based, and since statements made obiter dictum do not form part of the basis for the decision, Article 113(1) EPC does not confer any "right of reply"”

EPO T 0816/19  -  link

3. The framework of the appeal

3.1 Rule 12(2) RPBA states the following:

"The statement of grounds of appeal and the reply shall contain a party's complete case. They shall set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and should specify expressly all the facts, arguments and evidence relied on ...".

3.2 The present appeal is against the decision of the Examining Division to refuse the application on the grounds that the claimed subject-matter did not meet the requirements of Article 84 EPC, due to a lack of clarity, and did not meet the requirements of Article 84 EPC in combination with Rules 43(1) and (3) EPC, as claim 1 did not contain all the technical features essential to the definition of the invention.

T 1003/19 - Appeal against grant

Key points

• The patentee appeals against the grant of the patent, with success. 
• " Whereas the appellant neither by its letter dated 7 June 2018 nor by any prior letter requested the grant of a patent with any other than the 7 drawing sheets as initially submitted and published, the communication under Rule 71(3) EPC dated 13 August 2018 refers only to "drawings, sheets 1/1 as published"." 
• " The consequence as stipulated in Rule 71(5) EPC, i.e. "the applicant ... shall be deemed to have approved the text communicated to him under paragraph 3", only applies where the applicant, according to Rule 71(3) EPC, has been informed "of the text in which it [i.e. the examining division] intends to grant" the patent. The meaning of the word "text" (in German: "Fassung") is not limited to written information but may contain visual information" 
• " Under normal circumstances, it is to be assumed that the text referred to in a communication under Rule 71(3) EPC reflects the true will of the examining division and is therefore identical to the text on the basis of which the grant of the patent is intended." 
• " In the present case, however, there is sufficient evidence to conclude that this was not the case" 
• The appeal is admissible and allowable. However, the appeal fee is not refunded.
•  " The fact that a narrow interpretation of Rule 71(3) and (5) EPC as proposed by this board and by the board in decision T 2081/16 [...] allows for an appeal to be treated as admissible should not be misinterpreted as an invitation to neglect the applicant's duty to carefully check both the communication and the "Druckexemplar" sent to it under Rule 71(3) EPC." 

EPO Headnote

1. Rule 71(5) EPC only applies where the text intended for grant has been communicated to the applicant according to Rule 71(3) EPC (see Reasons 2.4).

2. The fact that the list of documents intended for grant neither corresponds to any request of the applicant nor to any amendment explicitly suggested by the examining division is sufficient to indicate that the communication under Rule 71(3) EPC does not contain the text intended for grant; the existence of discrepancies between the text of the communication and the "Druckexemplar" may be another indication (see Reasons 2.4.4).

3. Differentiation from G 1/10 (see Reasons 4).

4. Where the applicant could have noticed an apparent discrepancy between the text of the communication under Rule 71(3) EPC and the "Druckexemplar", the reimbursement of the appeal fee is not equitable by reason of a substantial procedural violation (see Reasons 5).

Summary of Facts and Submissions

I. This appeal of the applicant (appellant) lies from the decision of the examining division dated 7 January 2019 to grant a patent on the basis of application documents as indicated in a communication under Rule 71(3) EPC dated 13 August 2018 following examination of European patent application No. 11846831.3, which was filed on 7 December 2011 as an international application with publication No. WO 2012/076981 A1.

T 2081/16 - Appeal against grant

Key points

• The patentee appeals against the grant of the patent.
• The (second) Rule 71(3) referred to " description pages 2, 3, 6 to 12, 14 to 22 and 24 as filed with the letter dated 4 December 2014" whereas the applicant had requested the grant to be based on " description pages 2, 3, 6 to 12, 14 to 22 and 24 as originally filed". 
• The appeal is admissible because the applicant is adversely affected.
• " The applicant cannot be deemed to have approved the text communicated to it in this communication according to Rule 71(5) EPC: Apparently neither the members of the examining division nor the appellant realised that the documents referred to in the [Rule 71(3) Communication] did not correspond to the documents according to the applicant's request []." 
• " The board concludes, especially given that the examining division did not indicate any new amendments in the corresponding field on page 1 of Form 2004C [of the Rule 71(3) Communication], that in the present case neither the documents referred to in Form 2004C nor the "Druckexemplar" reflected the text in which it intended to grant the European patent." 
• " Where the text intended for grant is not communicated to the applicant under Rule 71(3) EPC, the fact that the appellant subsequently files a translation and pays the fees for grant and publishing is not decisive. The provisions of Rule 71(5) EPC, in this regard, refer to Rule 71(3) EPC and therefore presuppose that the applicant has not only been notified of any text but of the text intended for grant."
•  "In arriving at this decision, the board does not deviate from G 1/10." 
• " The present decision is based on the fact that the text intended for grant had not been communicated to the applicant and, therefore, Rule 71(5) EPC did not yet apply. As a result, no text had been approved by the applicant. This is fundamentally different from attempts to impute mistakes in amended claims which were introduced by an applicant to the examining division "by suggesting the examining division did not intend to make a decision which in fact included the very text approved by the applicant himself - in order to bring the applicant's own error within the ambit of Rule 140 EPC" as referred to by the Enlarged Board in G 1/10 " 

EPO T 2081/16 - link

Reasons for the Decision

The appeal is admissible (point 1) and allowable (point 2). The board in arriving at this conclusion does not deviate from G 1/10 (see point 3).

1. Admissibility of the appeal

1.1 The appeal is admissible. The appellant is adversely affected. The granted version of the patent corresponds neither to a text submitted by the applicant (see below, point 1.2) nor to a text agreed by it (point 1.3), nor to a text deemed to have been approved by it (point 1.4). There is, therefore, a discrepancy between the applicant's request and the decision of the examining division.

1.2 Whereas the applicant, with its letter dated 29 July 2015, requested the grant of a patent on the basis of "original description pages 2, 3, 6 to 12, 14 to 22 and 24 ...", the communication dated 16 September 2015 sent by the formalities officer refers to "description pages 2, 3, 6 to 12, 14 to 22 and 24 filed in electronic form on 4 December 2014 ...".

T 0084/16 - Inadmissible appeal against patent specification

Key points

• In this appeal against the grant of a patent, the B1 specification contained printing errors, compared to the Druckexemplar. For some reason, the patentee does not request a reprint of the patent specification, but files an appeal. The Board finds the appeal to be inadmissible.
• "No legal effects are provided by the EPC with respect to the patent specification" "Accordingly, from the above the board considers that the decision under appeal was correct and the appellant was not adversely affected by it." 
• " The board considers that the appropriate remedy in the present case, i.e. where the patent specification diverges from the text on which the grant decision is based, is outlined or in the Guidelines [] namely that the text of the patent specification be brought into conformity with the content of the grant decision. The Guidelines indicate that such mistakes in the patent specification may be corrected at any time." 

EPO T 084/16 -  link

Summary of Facts and Submissions

I. The patent proprietor (hereinafter "appellant") filed an appeal against the examining division's decision dated 2 July 2015 to grant, pursuant to Article 97(1) EPC, European patent No. 2 416 799 based on European patent application No. 10 762 578.2. The application had originally been filed as an international patent application and was published as WO 2010/118435 having the title "PAR-1 activation by Metalloproteinase-1 (MMP-1)". The appeal was based on the submission that the decision to grant the patent contained errors.

T 1377/15 - No appeal against Rule 71(3)

Key points

• This appeal was against a Communication pursuant to Rule 71(3) EPC based on the Auxiliary Request. The Communication includes the reasons for refusal of the Main Request. The appeal is inadmissible because the Communication is not a decision to refuse the application. To obtain a refusal, the application should have declared that he maintains the Main Request in response to the Rule 71(3) Communication.
• For some reason, the Board gives its substantive analysis under the" Summary of Facts and Submissions" part.
• After the appeal, a Notice of loss of rights under Rule 112 EPC was issued for failure to reply to the Rule 71(3) Communication. 

T 1377/15 - link

Exposé des faits et conclusions

IV. []

4. Il convient, d'abord, de noter que, conformément à l'article 106(1) CBE, seules sont susceptibles de recours les « décisions » des divisions d'examen. Selon l'article 106(2) CBE, une décision qui ne met pas fin à une procédure à l'égard d'une des parties ne peut faire l'objet d'un recours qu'avec la décision finale, à moins que ladite décision ne prévoie un recours indépendant.

Afin de pouvoir juger si le présent recours est dirigé ou non contre une décision au sens de l'article 106 CBE, il y a lieu, d'abord, d'observer que c'est le contenu et non pas la forme d'un document qui détermine s'il s'agit d'une décision ou d'une notification (cf. J 8/81, JO OEB 1982, 10).

La « décision rejetant la requête principale » sur le formulaire 2906

T 2001/14 - Buying time after Rule 71(3)

Key points - [C] (online 21.09.2015) -  appeal exceptionally allowable

• After oral proceedings before the Examining Division, a Rule 71(3) EPC Communication is issued for the sole request. The applicant files new requests. These are not admitted (Rule 137(3) EPC) and the application is refused. The applicant appeals. " In the statement of grounds of appeal, the appellant did not challenge the legal basis given in the appealed decision, nor did it give any reasons why the decision under appeal was wrong. In particular, no reason was given as to why, in the given circumstances of the present case, the division had not exercised its discretion under Rule 137(3) EPC in accordance with the right principles or had exercised its discretion in an unreasonable way"
• Instead, with the statement of grounds of appeal, the appellant filed new amended claims according to a main request and a first auxiliary request, as well as new claims according to a second auxiliary request, the claims being "identical with the statement of claim set out in the Official Communication under Rule 71(3) EPC".
• The appeal is exceptionally held admissible based on the second auxiliary request, as the filing of that request removes the factual basis of the decision. The case is remitted for further prosecution based on that request.
• After the appeal decision, the present application is withdrawn. The day before the oral proceedings before the Board, a divisional application had been filed, about 3 years after the Rule 71(3) communication for the parent, and of course after the abolition of the Rule 36 limit on filing divisional applications.
• This decision was earlier discussed at the DeltaPatents blog.

EPO T 2001/14 - link 

Summary of Facts and Submissions

I. The appeal concerns the decision of the examining division refusing European patent application No. 09159210.

II. The examining division issued a communication under Rule 71(3) EPC dated 30 July 2012 informing the applicant that it intended to grant a patent on the basis of a set of claims of a sole request submitted by the applicant during oral proceedings before the examining division.

III. The applicant did not consent to the text proposed for grant but instead, with a letter dated 10 December 2012, submitted claims of a new main request and requested the grant of the patent on the basis of these claims, or, as an auxiliary request, based on the claims as indicated in the communication under Rule 71(3) EPC.

IV. By a letter dated 12 December 2012, the applicant withdrew the "auxiliary request as of December 10, 2012".

V. In a communication dated 2 January 2013, the examining division expressed its preliminary view that, prima facie, claim 1 of the main request then on file would lead to objections that had already been overcome during oral proceedings and that, considering that two auxiliary requests had already been discussed during the oral proceedings, the applicant was not considered to be entitled to call into question the outcome of the previous course of the proceedings. It further informed the applicant that the application would be refused under Article 90(5) and Rule 137(3) EPC.

VI. With a letter dated 13 May 2013, the applicant submitted claims of a new auxiliary request 1.

VII. In its decision the examining division exercised its discretion as provided for in Rule 137(3) EPC and did not consent to the amendments to the claims of the main request filed with the letter dated 10 December 2012 and of the auxiliary request 1 filed with the letter dated 13 May 2013. The examining division gave reasons in the decision under appeal why it refused its consent to these amendments, which replaced the text of the application on the basis of which a patent could have been granted according to the communication under Rule 71(3) EPC dated 30 July 2012. Since only the claims according to the main request and the auxiliary request 1 were then on file, the application was refused.

VIII. The applicant (appellant) appealed against the decision of the examining division.

Within the two-month period under Article 108, first sentence, EPC, a notice of appeal was filed and the prescribed appeal fee was paid (Article 108, first and second sentences, EPC). The statement setting out the grounds of appeal was filed within the four-month period under Article 108, third sentence, EPC.

In the statement of grounds of appeal, the appellant did not challenge the legal basis given in the appealed decision, nor did it give any reasons why the decision under appeal was wrong. In particular, no reason was given as to why, in the given circumstances of the present case, the division had not exercised its discretion under Rule 137(3) EPC in accordance with the right principles.

Instead, with the statement of grounds of appeal, the appellant filed new amended claims according to a main request and a first auxiliary request, as well as new claims according to a second auxiliary request, the claims being "identical with the statement of claim set out in the Official Communication under Rule 71(3) EPC".

IX. The board sent a communication under Article 15(1) RPBA annexed to the summons to oral proceedings.

In that communication, the board expressed doubts that the appeal was admissible since the statement of grounds of appeal appeared unsubstantiated and thus seemed not to comply with the requirements of Article 108, third sentence, and Rule 99(2) EPC.

The board also stated that the claims according to the second auxiliary request filed with the statement of grounds of appeal were identical to the claims which formed the basis for the communication under Rule 71(3) EPC dated 30 July 2012 and this fact could play a role for the question whether the appeal was admissible in view of the jurisprudence of the boards of appeal.

The board also informed the appellant that, if the appeal was found admissible, the debate would continue in the oral proceedings on the allowability of the appeal and that the first issue for discussion on the allowability of the appeal would be the admission of the requests in view of Article 12(4) RPBA. The board expressed its view that the admissibility of the main request and the first auxiliary request then on file was highly doubtful whereas the second auxiliary request could be considered admissible because the claims of this request formed the basis on which the examining division intended to grant a patent.

X. With a letter dated 13 May 2015, the appellant filed new claims according to a new main request and according to new first to third auxiliary requests.

XI. At the oral proceedings before the board the appellant (applicant) requested that the decision under appeal be set aside and that a patent be granted on the basis of claims 1 to 5 of the main request, or claims 1 to 4 of the first auxiliary request, or claims 1 to 4 of the second auxiliary request, or claims 1 to 3 of the third auxiliary request, all requests filed with letter dated 13 May 2015. [...]

Reasons for the Decision

1. Admissibility of the appeal

1.1 According to Article 108, third sentence, EPC a statement setting out the grounds of appeal must be filed in accordance with the Implementing Regulations within four months of notification of the decision. Furthermore, Rule 99(2) EPC provides that in the statement of grounds of appeal the appellant must indicate the reasons for setting aside the decision, or the extent to which it is to be amended and the facts and evidence on which the appeal is based.

1.2 It is an established general principle that the grounds for appeal should specify the legal or factual reasons on which the case for setting aside the decision is based. The arguments must be clearly and concisely presented to enable the board to understand immediately why the decision is alleged to be incorrect, and on what facts the appellant bases his arguments, without first having to make investigations of its own (see Case Law of the Boards of Appeal of the European Patent Office, 7th edition, September 2013, section IV.E.2.6.3 a)). Moreover, the grounds of appeal must deal with the main reasons given for the contested decision (see, for example, T 213/85, OJ EPO 1987, 482, point 3 of the Reasons).

1.3 The examination of whether the requirements of Article 108, third sentence, and Rule 99(2) EPC are met has to be made on the basis of the statement of grounds of appeal and of the reasons given in the contested decision, taking into account any amendments made to the claims (see for example J 22/86, OJ EPO 1987, 280, point 2 of the Reasons; T 162/97, point 1.1.2 of the Reasons).

1.4 In the present case the examining division exercised its discretion as provided for in Rule 137(3) EPC and did not consent to the amendments to the claims of the main request filed with the letter dated 10 December 2012 and of the auxiliary request filed with the letter dated 13 May 2013. The examining division gave reasons in the decision under appeal why it refused its consent to these amendments, replacing the text of the applica­tion on the basis of which a patent could have been granted according to the communication under Rule 71(3) EPC dated 30 July 2012. Since only the claims according to the main request and the auxiliary request were then on file, the application was refused.

1.5 In decision G 7/93 (see point 2.6 of the Reasons) the Enlarged Board of Appeal stated that if an examining division has exercised its discretion under Rule 86(3) EPC 1973 (which corresponds to Rule 137(3) EPC) against an applicant in a particular case and the applicant files an appeal against the way in which such discretion was exercised, it is not the function of a board of appeal to review all the facts and circumstances of the case as if it were in the place of the first-instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first-instance department. The Enlarged Board of Appeal added that if a first-instance department is required under the EPC to exercise its discretion in certain circumstances, such a department should have a certain degree of freedom when exercising that discretion, without interference from the boards of appeal and that a board of appeal should only overrule the way in which a first-instance department has exercised its discretion if it comes to the conclusion either that the first-instance department in its decision has not exercised its discretion in accordance with the right principles, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion.

1.6 In the statement of grounds of appeal, the appellant did not challenge the legal basis given in the appealed decision, nor did it give any reasons why the decision under appeal was alleged to be wrong. In particular, no reason was given as to why, in the circumstances of the present case, the appellant thought that the division had not exercised its discretion under Rule 137(3) EPC in accordance with the right principles or had exercised its discretion in an unreasonable way. Since the appellant did not provide in the statement of grounds of appeal any reasons as to why the decision was alleged to be incorrect, the reasoning contained in the statement is insufficient to meet the requirements of Article 108, third sentence, and Rule 99(2) EPC. This would usually mean that the appeal has to be found inadmissible (Rule 101(1) EPC).

1.7 With the statement of the grounds of appeal, the appellant filed new amended claims according to a main request and a first auxiliary request, as well as new claims according to a second auxiliary request. The claims according to this second auxiliary request are indicated as being "identical with the statement of claim set out in the Official Communication under Rule 71(3) EPC dated July 13, 2012 [sic]".

In its decision, the examining division exercised its discretion under Rule 137(3) EPC and refused its consent to replace the text of the applica­tion on the basis of which a patent could have been granted by the requests then on file. These reasons for refusing the examining division's consent apparently do not apply to the claims of the second auxiliary request, filed with the statement of grounds of appeal, since these claims relate to precisely the claims intended for grant according to the communication under Rule 71(3) EPC dated 30 July 2012.

In view of the above, the mere filing of the second auxiliary request is to be interpreted as removing the factual basis for the refusal, thereby overcoming the reasons for the refusal.

In these exceptional circumstances, the requirements of Article 108, third sentence, and Rule 99(2) EPC are considered to be met in respect of the second auxiliary request.

1.8 Since the admissibility of an appeal can only be assessed as a whole (see T 509/07, point 1.4 of the Reasons) the appeal is admissible.

2. Admission of the main request and the first and second auxiliary requests, all requests filed with letter dated 13 May 2015.

2.1 According to Article 12(2) RPBA, the statement of the grounds of appeal must contain a party's complete case. Any amendment to a party's case after it has filed its grounds of appeal may, according to Article 13(1) RPBA, be admitted and considered at the board's discretion. The discretion must be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.

2.2 The sets of claims submitted as the main request and as first and second auxiliary requests were filed with the letter dated 13 May 2015 in reply to the board's communication under Article 15(1) RPBA about one month before the oral proceedings. Hence the amendments to the appellant's case were filed after the statement of the grounds of appeal. The new requests are there­fore an amendment to the appellant's case within the meaning of Article 13(1) RPBA. Consequently, the ad­mission of these requests is at the board's discretion.

2.3 The appellant argued that the new sets of claims were a reaction to the board's communication. As it could be deduced from this communication that the second auxiliary request then on file was the most promising request, the new sets of claims were based on that request.

However, this argument does not apply to the set of claims according to the first auxiliary request, which evidently relates to subject-matter that is signi­ficantly different from the subject-matter claimed in the second auxiliary request underlying the board's communication (which corresponds to the present third auxiliary request).

Furthermore, it was already evident in the first-instance proceedings that the claims according to the former second auxiliary request were promising since they formed the basis for the communication of the examining division under Rule 71(3) EPC, informing the applicant that it intended to grant a patent. The communication under Article 15(1) RPBA of the board did not add anything in this respect as it related merely to the board's provisional opinion concerning procedural issues, namely the admissibility of the appeal and the admission of the requests then on file.

The claims of the main request and the first and second auxiliary requests are therefore not considered to be a response to points raised in the board's communication.

2.4 The appellant also argued that the new sets of claims were filed late for procedural economy, as this avoided the examining division having to deal with a large number of auxiliary requests.

However, if the present main request and the first and second auxiliary requests were admitted into the appeal proceedings, the board might well remit the case to the department of first instance for substantive examination of these requests in two instances. The examining division would then have to deal with the requests, while the conduct of the appellant would have led to a considerable delay in the proceedings. Furthermore, the examining division would possibly have to re-open substantive examination with the possible result of further communications and even a second refusal and subsequent appeal proceedings.

The filing of the claims of the main request and the first and second auxiliary requests at this late stage of proceedings is therefore considered to be contrary to the interests of procedural economy.

2.5 Furthermore, were the board to deal with the substantive examination of the claims according to the present main request and the first and second auxiliary requests, complex discussions might well ensue, in particular in relation to the requirements of clarity and the basis in the original application documents as well as novelty and inventive step. This is for example to be expected in relation to the features deleted as compared to the subject-matter of claim 1 of the present third auxiliary request, e. g. those relating to the display.

2.6 In view of the above considerations, exercising its discretion under Article 13(1) RPBA, the board does not admit the main request and first and second auxiliary requests into the proceedings.

3. Admission of the third auxiliary request filed with letter dated 13 May 2015 and further procedure

3.1 The third auxiliary request was filed after the statement of the grounds of appeal and it is therefore an amendment to the appellant's case within the meaning of Article 13(1) RPBA. However, since the claims of the present third auxiliary request are identical to those of the second auxiliary request, filed with the statement of grounds of appeal, it is appropriate for the board to also consider the provisions of Article 12(4) RPBA when exercising its discretion under Article 13(1) RPBA.

The claims according to the present third auxiliary request are also identical to the claims which formed the basis for the communication under Rule 71(3) EPC dated 30 July 2012. In these exceptional circumstances, the board sees no reason not to admit the third auxiliary request under Article 12(4) RPBA although this request was withdrawn in the first-instance proceedings and re-filed with the statement of grounds of appeal. Therefore the board admits the third auxiliary request into the proceedings.

3.2 Since the claims of the third auxiliary request are identical to those forming the basis on which the examining division intended to grant a patent, it is considered to be appropriate to remit the case to the department of first instance for further prosecution on the basis of the present third auxiliary request (Article 111(1) EPC).

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.

T 0468/13 - Appeal against grant

EPO T 468/13

For the decision, click here

Key points

• In this case, the applicant noted after (publication of the mention of the) grant that some errors were not corrected in the description. He filed an appeal, submitting the corrected description. Interlocutory revision was granted. This is an (expensive and timewise limited) alternative to Rule 140, since use of Rule 140 in such cases was ruled out by G 1/10.
• Interestingly, interlocutory revision was granted despite the patent being granted in conformity with the Druckexemplar approved by the applicant. 
• The present decision of the Board concerns the request for reimbursement of the appeal fee, which was made on the ground that the changes in the description had already been filed before the R71(3) communication, but were erroneously not taken into account in the Druckexemplar. According to the Board, this does not amount to a substantial procedural violation, because the applicant had approved the Druckexemlar. 

Summary of Facts and Submissions

I. The present decision concerns the appellant's request for reimbursement of the appeal fee submitted in connection with the appeal filed against of the decision of the examining division dated 15 November 2012 granting a European patent in respect of application number EP 08706692.4.

II. The essential steps preceding the filing of the appeal were as follows:

The examining division issued a communication dated 18 July 2012 pursuant to Rule 71(3) EPC indicating the text in which it was proposed to grant a patent.

With a letter dated 6 November 2012, the applicant approved the text and completed the necessary formalities. The decision to grant was duly posted on 15 November 2012.

In a fax letter dated 24 January 2013, the applicant requested a correction under Rule 140 EPC to the effect that page 4 of the patent should be deleted, as had been requested in the applicant's earlier letter dated 2 February 2011.

In the minutes of a telephone conversation between the formalities officer and the applicant's representative dated 25 January 2013, the applicant was informed that correction under Rule 140 EPC was not possible and that the only possibility to set aside the decision was to file an appeal.

III. The applicant filed a notice of appeal on the same day. In the notice of appeal, the appellant requested that the "false decision" be set aside and a "corrected patent" be granted. It was stated that a written statement setting out the grounds of appeal had been filed with the letter dated 24 January 2013. The appellant requested reimbursement of the appeal fee.

IV. By means of a communication dated 27 February 2013, the examining division ordered rectification pursuant to Article 109 EPC and set aside the decision to grant. However, it was stated that the request for reimbursement of the appeal fee could not be allowed and that the request would be forwarded to the Board of Appeal for a decision (Rule 103(2) EPC).

V. Following commencement of proceedings before the board, the board issued a communication in which the appellant was informed of the reasons why the board considered that the appeal fee should not be reimbursed.

In a response to the board's communication dated 21 July 2015, the appellant requested that the board decide on the basis of the documents currently on file.

Oral proceedings have not been requested.

Reasons for the Decision

1. As the examining division granted interlocutory revision under Article 109 EPC, the only matter to be decided by the board is the request for reimbursement of the appeal fee.

2. In accordance with Rule 103(1)(a) EPC, "The appeal fee shall be reimbursed ... in the event of interlocutory revision ... if such reimbursement is equitable by reason of a substantial procedural violation". Other reasons for reimbursing the appeal fee are if the appeal is withdrawn before filing the statement of grounds of appeal (Article 103(1)(b) EPC), or if the appeal is deemed not filed, neither of which apply here.

3. The board notes that the appellant has not explicitly alleged that a substantial procedural violation was committed by the examining division. The board has however considered whether the failure to take into account the applicant's request to amend the description dated 2 February 2011 amounts to a substantial procedural violation which would render equitable the reimbursement of the appeal fee. It finds this not to be the case, for the reasons set out below.

4. With the communication under Rule 71(3) EPC dated 18 July 2012, the examining division informed the applicant of the text in which it intended to grant the patent. Thereby, the applicant was given the opportunity to check the text of the patent to be granted.

After receipt of the Rule 71(3) EPC communication the applicant did not request a correction of the description, but instead, with the letter dated 6 November 2012, expressly approved the text of the patent. German and French translations of the claims were duly filed. The fees for grant and printing were duly paid on 24 October 2012. Thus the text communicated with the Rule 71(3) EPC communication was also deemed approved under Rule 71(5) EPC. Therefore, the text in which the patent was granted corresponded to the text approved by the applicant. Consequently, no substantial procedural violation can be identified with respect to the procedure to grant.

With regard to the earlier request dated 2 February 2011 to amend the description mentioned in the statement of grounds, the Enlarged Board of Appeal has established that if, given the opportunity to check the patent text before approving it, an applicant does not draw any errors to the attention of the examining division and thus ensure his approval is limited to the correct text, then the responsibility for any errors remaining in that text after grant should be his alone (cf. G 1/10, Reasons for the Decision, point 11). In this light, the failure of the examining division to take account of the applicant's earlier request was not a substantial procedural violation which could have rendered reimbursement equitable (cf. Rule 103(1)(a) EPC).

5. The appellant has provided no counter-arguments.

6. It follows that the request for reimbursement of the appeal fee must be refused.

Order

For these reasons it is decided that:

The request for reimbursement of the appeal fee is refused.