EP 3 705 780 A2 relates to a magnet-thermocouple system for the positive safety supply of gas to burners or the like.
Brief outline of the case
The Receiving Section refuse the application under Art 90(5) in conjunction with R 58. Formal deficiencies under R 57 were not rectified in time. Drawings were the problem.
The applicant appealed the decision. With the appeal the applicant filed again a request for re-establishment of rights and paid the relevant fee as a precautionary measure.
The RS granted interlocutory revision but refused to reimburse the appeal fee.
The file was thus send to the LBA.
The applicant’s point of view
The applicant considered the RS had exceeded its competences because the objection was not merely related to formal aspects of the drawings but addressed their content, thus substantive matters which are normally in the competence of the ED. This fact amounted to a procedural violation.
A further serious violation was committed by the EPO in providing information on a procedural non-compliance leading to a severe loss of rights to an assistant by means of an informal telephone call, rather than to the duly appointed representative with an official communication. Informing, in a informal manner, the assistant instead of the duly appointed professional representative, prevented the latter from the possibility to correctly react.
The applicant requested inter alia that the appeal fee and the fees for re-establishment of rights be reimbursed, on account of an alleged severe procedural violation.
The board’s decision
On the competence of the RS
The board held that the RS must ensure that the documents making up the application, to the extent necessary to allow electronic and direct reproduction in an unlimited number of copies and reasonably uniform publication of the application.
The board reminded that it is not within the RS’s competence to decide on a request for correction, necessitating a technical examination, as the decision on the correction must be left to the ED.
The question of what exactly the figures in the drawings show with respect to the claimed invention is not part of the formal examination before the RS.
Rather, it is the responsibility of the applicant to determine the scope of the disclosure by selecting a readable version of the application documents, including the figures reproduced in the drawings.
In particular, it is not permissible to the RS to allow the filing of improved drawings resulting in a disclosure which could not be found in the original version of the application; nor could the applicant be compelled to change the drawings and so sacrifice a disclosure which, in their view, could only take this form, see J 4/09, Reasons 2
The board took the view that pointing to discrepancies between amended documents, filed to remedy a deficiency under R 58 and the originally filed ones, is encompassed by the competence of the RS under Art 16 to examine formal requirements of European patent applications, namely the requirements under R 58, and under R 137(1).
Certain deficiencies may require a correction under R 139 in order to be remedied. Such a correction is of the competence of the ED.
Application to the present case
In the present case, the deficiency noted in the communication of the RS was of a purely formal nature.
The RS did not do anything more than checking that the amended drawings corresponded to those originally filed.
It was immediately apparent that Fig. 5B did not contain the text present in Fig. 5. To appreciate this, it was not necessary to have any notion of the meaning of certain words, or to understand what is contained in the description with regard to the drawings, or what the drawings originally filed in fact illustrate.
The communication of the RS was issued within its competences and no procedural violation was committed in this respect.
In the present case, at the time the appeal was filed, the deficiency had already been remedied, albeit late, with the filing of the correct drawings. Thus, the ground for refusal of the application had been remedied.
Interlocutory revision
As the ground for refusal of the application had been remedied, the RS should have actually granted interlocutory revision in accordance with Art 109.
The board could not see any reasons why in the present case the procedure and the established practice of granting interlocutory revision was not followed and for this reason alone the decision under appeal is to be set aside and the refusal of the application must be reversed.
The board also noted that the applicant had filed a request for reestablishment which had been ignored by the RS.
The reimbursement of the appeal fee
In the present case, the appellant based their request for reimbursement in essence on several allegations: firstly that the communication appeared not to have been received by the appellant, secondly that the Communication exceeded the competences of the Receiving Section, thirdly that information on a procedural non-compliance leading to a severe loss of rights had been given to an assistant by means of an informal telephone call, and finally that the decision to refuse the application was issued despite all these arguments had already been brought to the attention of the RS.
The board held that, should a deficiency be remedied late, i.e. after expiry of the time limit given under R 58 , refusal of the application is justified and can only be rectified by means of appeal. Under such circumstances reimbursement of the appeal fee is not equitable, in the absence of a SPV.
However, in the present case, the Board sees at least a SPV in the fact that the RS disregarded the objection of lack of receipt of the communication, and gave no consideration to the request for re-establishment of rights.
The board noted that there is no trace in the file that a telephone note had been formally notified to the professional representative, giving him the chance to take position.
In view of the circumstances, the board considered that reimbursement of the appeal fee as equitable. The fee for reestablishment is also to be reimbursed.
Comments
The board’s decision is interesting as it clarified the competences of the RS. The RS is only competent as long as there is no technical knowledge required, as this would require the application of R 139.
The board also reminded that if the reasons for appeal are remedied when filing an appeal, interlocutory revision under Art 109 is to be granted.
The board further reminded that telephone conversations between the RS and/or an ED should be minuted. There are no informal telephone conversations between the RS and/or an ED.
In T 647/93, Reasons T 677/97, Reasons 3, or in T 898/96, Reasons 3, the board held that not granting interlocutory revision under Art 109 constituted a SPV.
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