T1823/23 – Reintroducing missing figures after issuance of the Examining Division’s decision to grant

Once the Examining Division has decided that a patent can be granted it will inform the applicant of the text on the basis of which it intends to do so. This text is communicated to the Applicant in the guise of the Communication under Rule 71(3) EPC. In this Communication, the Examining Division invites the applicant to pay the fee for grant and publishing and to file a translation of the claims, or to request reasoned amendments or corrections to the communicated text, within four months.

It is essential for the Applicant and European representative to check the communicated text, e.g., to make sure they are happy with any proposed amendments made by the Examining Division and to check the bibliographic data is correct.

It can be difficult to reintroduce missing figures into the text once the Examining Division has issued its decision to grant. There is no remedy after grant to restore missing pages from the granted patent specification. The proprietor can file an appeal against the Examining Division’s decision to grant, but the chances of success very much depend on the facts of the case. T1823/23 is one of those cases where the proprietor was successful in reintroducing missing figures.

Background

The application as filed included 3 drawing sheets. In the request for entry into the European phase, in all examination reports from the Examining Division, and in the summons to attend oral proceedings, the 3 drawing sheets were always properly listed. The Applicant also requested that the application grant with the drawing sheets in its response to the summons to attend oral proceedings.

The Examining Division shortly after informed the Applicant that it intended to grant a European patent on the basis of the description pages and claims previously filed with some additional amendments. However, the communication issued by the Examining Division did not contain any drawings nor was there any reference to the drawings or to their removal.

The Applicant then completed the grant formalities by filing claim translations and paying the grant fees.

Following the decision of the Examining Division to grant the patent in the version indicated above, the Applicant appealed the decision and requested to grant the patent on the basis of documents identified in its response to the summons to attend oral proceedings, i.e., with the drawing sheets.

The Board’s decision

The Board held that “it is entirely evident that the examining division considered the figures to be part of the specification of which the patent should be granted”. The Board reasoned that there was never an indication that the figures of the drawing sheets would be deleted, and that such a deletion would be contradictory to the text of the description proposed for grant.

The Board also held that “there is no indication that the examining division intended to include such deletion to the application documents submitted by the applicant”. The Board reasoned that it was common practice at the EPO to only suggest amendments which the Examining Division can reasonably expect the applicant, but removing all drawing sheets is not an amendment that can be suggested. The Board also highlighted the fact that the Examining Division did not use the special field at the bottom of page 1 of Form 2004C to indicate its suggested amendments contrary to good standard EPO practice.

In view of the history summarised above, the Board held “it can only be concluded that the examining division had no reason or intention to delete the drawing sheets from the list of documents intended for grant”. The Board concluded that neither the documents referred to in nor submitted with the intention to grant communication corresponded to the text in which the Examining Division intended to grant the European patent.

The Examining Division therefore did not communicate the text that it intended to grant.

The Board held that Rule 71(3) EPC “clearly implies the need to indicate those versions of the description, claims and drawings which, after detailed and in-depth legal and technical examination proved to meet the requirements of the EPC”. The Board also held that “Rule 71(5) EPC 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 Board held that the present case was distinguished from decision T0265/20 “not least in the fact that, as outlined above, the board could identify convincing reasons why the examining division’s true intention was not reflected by the text of the Rule 71(3) EPC communication, whereas the board in case T 265/20 was not in a position to draw such a conclusion for “the case at hand””.

The Board considered that the detailed reasons given in T 1003/19, T 2081/16 and T 408/21 to be fully convincing and lead to a result that prevents the patent applicant from being seriously prejudiced by the absence of a possibility to request corrections under Rule 140 EPC. The Board saw no need to submit a referral to the Enlarged Board in this respect.

As the text on the basis of which the patent was granted was not in accordance with the Applicant’s request, the Board held that the Applicant was adversely affected by the Examining Division’s decision to grant the patent.

The Board concluded that the appeal was admissible and allowable.

The decision under appeal was set aside. The case was remitted to the Examining Division with an order to grant a patent on the basis of the description pages and claims in the text intended to grant and drawing sheets 1/3 to 3/3 as originally filed.

Refund of appeal fee?

Rule 103(1)(a) EPC provides for a refund of the appeal fee where an appeal is allowable and the reimbursement is equitable by reason of a substantial procedural violation.

The Board held that in the present case reimbursement of the appeal fee was not equitable since the error was already present in the documents accompanying the Rule 71(3) EPC communication and the Applicant “could and should” have noticed it when checking.

The request for reimbursement of the appeal fee was rejected by the Board.

Take-away messages

In the decision, the Board warns that although a narrow interpretation of Rule 71(3) and (5) EPC was adopted by the Board leading to an admissible appeal in this case, this should “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”.

This decision serves as a warning of the necessity of thoroughly checking the documents submitted in the text intended for grant sent with the Communication under Rule 71(3) EPC. As a minimum, you should be asking yourself the following questions:

• Are all pages present and correct (including figures)?
• Are the amendments made by the Examining Division acceptable?
• Are the Applicant(s) and inventor(s) details correct?

Where the discrepancy has been introduced by the EPO, we have been successful in contacting the EPO early to request the issuance of a new Rule 71(3) EPC communication with the missing figures included in the text intended for grant. However, there is no guarantee that the EPO will issue a new Rule 71(3) EPC communication after the issuance of the decision to grant.

Ultimately, performing the simple checks mentioned above will save you time and expense, and avoid potential issues in the long run.

See the full decision here.