EP 3 483 299 A1 relates to a steel material for hot stamp forming with ultra-fine grains and a process of making the same, a hot stamp forming process and a hot stamp formed member. It has been published in accordance with Art. 153(4) and goes back to the application PCT/CN2016/098411 published as WO 2018/006490.
Brief outline of the case
EP 3 483 299 A1 was published without drawings. Likewise, no drawings were mentioned in the list of application documents in the European search opinion accompanying the SESR.
The ED decided to grant a patent on the basis of the supporting documents indicated in the communication pursuant to R 71(3).
The applicants submitted that the patent was not granted on the basis of documents approved by them, because it did not contain any drawings.
The applicants appealed the decision to grant.
The applicant’s point of view
The filing of the appeal was justified because the patent had not been granted on the basis of documents approved by the applicants.
The present situation was very similar to those underlying T 1003/19, T 408/21 and T 1823/23. The communication under R 71(3) did not mention or contained any drawings, nor did it contain any reference to the drawings or their removal. The omission of all the drawings did not correspond to the appellants’ requests or to any amendment proposed by the ED.
Approving the text without any drawings had never been the applicants’ “true will”; nor had the ED communicated the text it “truly intended” to grant. Accordingly, R 71(5) did not apply.
Moreover, the appeal fee should be reimbursed, since the patent had not been granted on the basis of documents approved by the applicants. Accordingly, a SPV had occurred.
The applicants also requested a referral to the EBA to ensure a to ensure uniform application of the law under Art 112, cf. Art 20 and 21 RPBA.
The board’s decision
The applicants never agreed to the omission of the drawings, and in particular did not expressly agree to the text intended for grant in the communication pursuant to R 71(3). This distinguishes the present case from the situation underlying T 2277/19, Reasons1.2, and T 2864/18, Reasons 7, respectively.
A line of case law originating from T 2081/16 and T 1003/19 established that the legal consequence of R 71(5), i.e. the deemed approval of the notified text, only applies where the text communicated to the applicant is identical to the text on the basis of which the ED intends to grant the patent, as stipulated in R 71(3), and reflects the “true will” of the ED.
It is thus not sufficient that an applicant, having received a communication formally referring to R 71(3), paid the required fee and filed the required translations. The legal consequence of R 71(5), only arises if the communication sent also complies with the substantive requirements of R 71(3) EPC, i.e. if it actually contains the text in which the ED intended to grant the patent, on the basis of the documents filed by the applicant, possibly supplemented by individual marked amendments.
The absence of any drawing sheets in the communication pursuant to R 71(3) and consequently the published patent, in amendment of the applicants’ request, is a perpetuation of the error which had occurred earlier, i.e. the absence from the European A1 publication of any drawings.
Therefore, the ED did not communicate the text that it intended to grant.
It has been established case law since T 1003/19 that an ED’s error in compiling the documents intended for grant in a communication under R 71(3) that makes a clearly unintentional omission of part of the documents proposed by the applicant for grant as indicated in the applicant’s last request can still be corrected if the applicant files an appeal against the subsequent grant of the patent within the time limit under Art 108, at least if the applicant did not explicitly consent to the incorrect compilation.
Referral to the EBA
A referral to the EBA is not required, either to ensure uniform application of the law, or to align the case law and the Guidelines.
It may be assumed that a convincing body of case law has been established over recent years, and that other boards will in future follow the rationale of decisions T 2081/16, T 1003/19, T 408/21, T 1823/23 and T 1224/24, Reasons1.10, and indeed the present decision.
The board considered that the present decision does not deviate from G 1/10, which found that R 140 is not available to correct the text of a patent, and in support of this agrees with and refers to the reasoning in T 2081/16, Reasons3, and T 1003/19, Reasons 4.
A referral due to a point of law of fundamental importance arising, Art 112(1), second alternative, is not needed.
Criticism of the Guidelines
It may be that the ED refrained from granting interlocutory revision because the Guidelines H-VI do not yet properly distinguish between cases where a mistake was already contained in an applicant’s request or was explicitly approved by an applicant, and cases like the one at hand: where an ED, by mistake and unintentionally, deviated from the appellant’s latest request when listing the documents intended for grant in a communication under R 71(3) and this was neither pointed out to the applicant nor explicitly acknowledged by it.
For the board, a divergence between the Guidelines and the case law of the boards is not necessarily a reason for a referral. Rather, Art 20(2) RPBA assumes that under normal circumstances it is enough to state sufficient grounds to enable the decision to be readily understood, such that the Guidelines may be adapted where necessary.
Reimbursement of the appeal fee
Notwithstanding the applicant’s responsibility to carefully check the text communicated under R 71(3) and to use the possibility provided in R 71(6) to request amendments and corrections, the board found it equitable in the light of the specific circumstances of this case, that the appeal fee be reimbursed.
Comments
Although the present board was aware of decision T 265/20, in which the competent board did not follow the approach taken in T 1003/19 and T 2081/16, it nevertheless decided that a convincing body of case law has been established supporting its view.
It is interesting to note that when the present board speaks about a “convincing body of case law”, the boards were certainly different in their composition, but in T 1003/19, T 2081/16, and in the present case, the same legal member was at work…..
In T 265/20, the board held that the unambiguous wording of R 71(5) does not allow for an interpretation other than the foreseen legal consequence that the concluding step in establishing the final text for grant is the approval of the text by the applicant. Without the applicant’s approval of the text intended for grant, there is no grant of the patent. The board did thus find it right not to follow T 1003/19 and T 2081/16. There are thus clearly diverging interpretations of R 71(5) among the boards.
In T 265/20 and in the present case, the respective boards refused to refer questions to the EBA.
The present decision shows once more that, should a board not being willing to refer questions to the EBA, it will make sure that it is not obliged to do so.
for instance, when looking at the adaptation of the description, there are very few decisions going against the established line of case law requiring adaptation, e.g. T 56/21, and yet the board found it necessary in T 0697/22 to refer questions to the EBA, presently known under G 1/25.
The present decision shows once more that, should a bord not being willing to refer questions to the EBA, it will make sure that it is not obliged to do so.
The question of missing drawings at grant is not a too frequent occurrence, but since it happens and raises problems, it would have deserved a better treatment than a mere criticism of the Guidelines.
It has also to be noted that, in the Guidelines the notion of “purposive selection“, when dealing with novelty criteria of a selection, has been deleted. On the other hand, the “three point test” is not any longer called the “essentiality test”, but is still present in the Guidelines, in spite of many decisions heavily criticising it. First instance divisions are only bound by decisions of the EBA, or those decisions of BA which are quoted in them.
As the applicant waited until the decision to grant was issued to react to the absence of the drawings, it contributed itself to the problem. It could, and should have, reacted much earlier. It is thus not at all manifest that the appeal fee should have been reimbursed, although the original mistake was committed by the EPO. In T 265/20, the appeal was dismissed and the patent published without drawings.
Comments
3 replies on “T 387/25-Drawings missing at grant-Diverging case law”
One additional word of caution:
T 387/25 notes that the applicants-appellants “never agreed to the omission of the drawings, and in particular did not _expressly_ agree to the text intended for grant in the communication pursuant to Rule 71(3) EPC” (par. 1.3 of the reasons; emphasis mine).
When you use MyEPO to respond to a communication pursuant to Rule 71(3) EPC, the system automatically includes a paragraph which starts with “I agree with the text proposed for grant” (or something similar; I am quoting from memory). As far as I know, there is no way to remove this paragraph before signing the response. We can all speculate as to why the EPO made this choice, but if you used MyEPO, it will be much harder to say later that you never actually agreed with the text. It is more important than ever to double- and triple-check the Druckexemplar!
Here’s another example of the EPO practice of leading an applicant to a certain answer that they find desirable:
The ‘designation of inventor’ form 1002 recognizes only three cases for assignment: (explicit) assignment by agreement executed on a specific date, inventions by employees, and succession by inheritance, and it insists upon a date in case of ‘agreement’.
Yet, hn 99 of G1/22 (and G2/22) states ‘In most jurisdictions, rights to obtain a patent can be transferred without any written agreement or other formalities […] the EPO should adapt itself to the lowest standards established under national laws and accept informal or tacit transfers of priority rights under almost any circumstances.’
Two years after G1/22, form 1002 has still not been amended…..
A welcome decision. Regardless of what the case law and rule 71(5) say, there should be no possibility for a patent office to lose drawings that an applicant validly filed and never abandoned, with no recourse for the applicant, while the office shrugs and says “tough luck, should have been more careful”. Natural justice dictates that patent offices must provide ways for applicants to correct their formal errors. The applicant has, in return for a time-limited monopoly, published its secrets for the world to see and the office must be mindful of this. All too often, case law focuses on protecting third parties. Applicants sometimes deserve protection too.