EP 4 291 779 A1, published as WO 2022/171843 relates to an engine operating using a compression Shape Memory Alloy material.
Brief outline of the case
The text intended for grant of the ED’s in the R 71(3) communication indicated only one drawing sheet: “1/1 as published”.
The applicant appealed the ED’s decision and requested that the decision to grant be set aside and that the patent be corrected to include the complete set of filed drawings: Figures 1, 2A, 2B, 3A, 3B, 4, 5A, 5B, 5C, and 5D as contained on drawings pages 1/7 to 7/7 in the file and in the international publication.
At no moment during the prosecution the applicant indicated that any drawing sheets were to be deleted or replaced.
The applicant further requested reimbursement of the appeal fee in accordance with R 103(1)(a).
The board held the appeal allowable, but rejected the request for reimbursement of the appeal fee.
The board’s decision
The applicant was adversely affected by the ED’s decision
The board relied on T 0387/25,see catchword, and endorsed the conclusions and the legal reasoning on which T 0387/25 are based. It also referred to the CLBA, 11th edition, July 2025, IV.B.3.2.3b.
In accordance with the principles set out in T 0387/25, the legal fiction of deemed approval under R 71(5) does not apply in the present case. The ED’s clearly unintentional error can therefore still be remedied in the context of the present appeal.
No reimbursement of the appeal fee
The board adopted the reasoning set out in T 1823/23, Reasons 3, which applies mutatis mutandis to the present case.
In the case at issue the reimbursement of the appeal fee is not held equitable since the applicant made no use of opportunities to participate in the initial proceedings, cf. J 4/09, Reasons 4, as the error made by the ED was introduced already into the communication under Re 71(3), and the applicant could and should have noticed it when checking the text of the communication under R 71(3), because the fact that part of the published drawing were omitted should have alerted it and should have prompted a double check.
The fact that a narrow interpretation of R 71(3) and (5) allows for an appeal to be treated as admissible and allowable 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 R 71(3) EPC.
The request for reimbursement of the appeal fee was therefore rejected.
Comments
When looking at case law, there are different decisions to take into account.
In T 387/25, commented in the present blog, the board found it equitable to reimburse the appeal fee. 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. This request was rejected by the board. 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 request for referral was rejected by the board.
Indeed in T 1823/23, the board refused the reimbursement of the appeal fee, without however relying on the interplay between R 71(3) and 71(5). In T 1823/23, the board was aware of decision T 265/20.
In T 1003/19, the board acknowledged, like the present one, the interplay between R 71(3) and 71(5), but found, like the present board, the reimbursement of the appeal fee not equitable due to the inaction of the appellant.
In this respect, there was thus no need to resort to J 4/09 when it comes to sanctioning the inactivity of the applicant to refuse reimbursement of the appeal fee.
T 0550/25, commented in the present blog, the board acknowledged, like the present one, the interplay between R 71(3) and 71(5), but found, like the present board, the reimbursement of the appeal fee not equitable due to the inaction of the appellant.
In T 2081/16 the board acknowledged, like the present one, the interplay between R 71(3) and 71(5).
In T 1224/24, commented in the present blog, the request for reimbursement of the appeal fee was withdrawn by the applicant, but the board on its own did not consider reimbursement equitable, as the applicant had several opportunities during the examination proceedings to identify the error regarding the drawing sheets.
In T 408/21, the applicant did not request the reimbursement of the appeal fee and hence the board did not order it.
In T 0265/20, Catchword 2 and Reasons 2.6 ff, the drawings were also missing in the communication under R 71(3), and the board considered that approval under R 71(5) by paying fee for grant and publishing and filing translations had a binding effect and held the appeal for not allowable.
It is thus manifest that the case law in matters of missing drawings in the communication under R 71(3), there are different lines of case law:
- the approval under R 71(5) by paying fee for grant and publishing has a binding effect and the appeal for not allowable. Then, it is irrelevant whether a request for reimbursement of the appeal fee is filed or not;
- the approval under R 71(5) by paying fee for grant and publishing has no binding effect and the appeal is allowable,
- if the appeal is allowable, the appeal fee is reimbursed;
- if the appeal is allowable, the appeal fee might nevertheless not be reimbursed
It is high time to clarify the situation with a referral to the EBA.
Comments
2 replies on “T 026/26-Missing drawings at grant-Diverging case law”
I hope a referral to the EBA will never occur, not because I think it isn’t necessary at present (it clearly is), but because I hope appeals like these will become increasingly rare and the few that remain will have the same outcome as in T 0216/26.
Checking that a R71(3) communication is based on the proper documents takes some time, but not that much, and hardly poses any difficulty. If the representative fails to spot the problem at the R71(3) stage, then the patent can be salvaged with an appeal, but the appeal fee comes out of the representative’s pocket. Now that is equitable enough, isn’t it?
@ Extraneous Attorney
I do not think that a referral is warranted, because the number of cases at stake is modest and by no means comparable with other referrals.
What makes me ill at ease is when the boards, with a clever reasoning, claim that it cannot have been the true will of the ED to grant a patent without all or only part of the drawings. Even this results from an error, the will expressed by the ED is, at the R 71(3) stage, clearly to grant a patent without all or only part of the drawings.
We have T 265/20 and nothing in the future can withhold another board to decide the same way. The majority of decisions decide reimbursement, but this is not sufficient to avoid a different approach.
Who pays the appeal fee is a question to discus between the applicant and its representative, but I would find it appropriate if the representing was footing the bill. After all, he confirmed, willingly of not, the wrong decision of the ED. In such a case a professional liability insurance can make miracles.