EP 3 768 123 A1 relates to a therapeutic seat cushion equipped for pressure monitoring and an inflation system for it. It results from the application PCT/US2019/023630 published under WO 2019/183502.
Brief outline of the case
The applicant appealed the decision to grant as the patent as granted did not comprise all the drawing sheets 1/5 to 5/5.
The board decided that the applicant was adversely affected despite decision to grant in view of the absence of the drawing sheets. The appeal was thus deemed allowable.
The board order the ED to grant a patent comprising drawing sheets 1/5 to 5/5.
The board decided that the reimbursement of the appeal fee was not equitable.
The applicant’s point of view
The appellant based its arguments on a correction of an obvious mistake either in accordance with R 140 or on Rule 139. It also referred to decision G 1/10.
The board’s decision
R 139 or R 140 are not applicable
The Board noted that in line with decision G 1/10 these Rules are not applicable in the case at hand.
R 139 concerns the correction of obvious mistakes in any document filed with the EPO. This rule was thus not applicable.
R 140 is intended for correcting errors in decisions of the EPO and not errors in documents filed by an applicant. This rule was thus not applicable.
The appeal is admissible
The Board concluded that neither the documents referred to in Form 2004C nor the “Druckexemplar” reflected the text in which the ED intended to grant the patent. Hence, the text communicated to the applicant did not correspond to the text “intended” for grant under R 71(3).
Interplay between R 71(3) and R 71(5)
In accordance with T 1224/24, Reasons 1.4, T 1823/23, Reasons 1.9, T 408/21, Reasons 1.12, T 1003/19, catchword and Reasons 2.4 and T 2081/16, Reasons 1.4, the board considered that the legal consequence set out in R 71(5) can only apply if the communication under R 71(3) reflects the intention of the ED regarding the application documents on which the patent is to be granted.
This conclusion is drawn from the unambiguous wording of R 71(3), which uses the verb “intends”, clearly indicating the intention of the ED.
Deemed approval under R 71(5) can only occur after a text compliant with R 71(3) has been communicated to the applicant. R 71(5) is not a standalone provision.
Simply paying the fee and filing translations does not trigger deemed approval regardless of the communicated text’s content. The text must conform to R 71(3), to which R 71(5) refers, and align with the intention of the ED regarding the application documents that form the basis for granting the patent. Otherwise, the subsequent fee payment and translation filing remain ineffective.
The appeal is allowable
A decision to grant under Art 97(1), based on a text that was neither submitted nor agreed upon by the applicant does not comply with Art 113(2). The decision under appeal was therefore to be set aside.
The board held that in the case at hand, it can only be concluded that the omission of the drawing sheets 2/5 to 5/5 as published was never “intended” by the ED:
If the communicated text does not reflect the intention of the ED for granting the patent, neither the absence of a correction or amendment request under R 71(6), nor the payment of the fee and filing of translations under R 71(5) will have any legal consequence.
Non-reimbursement of the appeal fee
The board held the reimbursement of the appeal fee as the applicant made no use of opportunities to participate in the initial proceedings and referred to J 4/09, Reasons 4.
The conclusion relating to the interplay between R 71(3) and R 71(5) does not absolve the applicant of the responsibility to carefully review the content of the communicated text. R 71(6) namely allows the applicant to request reasoned amendments or corrections to the communicated text.
Normally, non-observation of the requirements of Art113(2) by the ED justifies reimbursement of the appeal fee, as is also mentioned in decision G 1/10, Reasons 12.
In the case at hand, it appears that the error was introduced by the ED already with the Supplementary European Search Report, and found its way into the communication under R 71(3).
In the present case, however, while the error was committed by the ED, the applicant had several instances to spot this error and, at the latest, could and should have noticed it when comparing the text of the communication under R 71(3) and the “Druckexemplar”. In particular, the fact that only one published drawing sheet instead of five drawing sheets existed should have alerted the appellant.
Comments
It can be agreed with the board that, if the ED does not notice that drawing sheets are missing when it issues the communication under R 71(3) whilst the applicant has never deleted or withdrawn those, the ED did not work properly.
On the other hand, the applicant, or in the present case its European representative (the applicant was residing in the US), has also a duty to check the completeness of the documents not only at the R 71(3) stage but all along the procedure. It is thus right that the appeal fee was not reimbursed.
In T 1424/24, 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.
Interplay between R 71(3) and R 71(5)-Diverging case law
In view of T 1224/24, T 1823/23, T 408/21, T 1003/19, and T 2081/16, there exists a line of case law according to which, under R 71(5) the payment of the granting fee and the filing of the translations, does not have any legal consequence if the communication under R 71(3) does not represent the true intention of the ED.
In T 0265/20, Catchword 2 and Reasons 2.6 ff, the drawings were also missing in the communication under R 71(3), the board considered that approval by paying fee for grant and publishing and filing translations had a binding effect and held the appeal for not allowable.
Diverging case law on the reimbursement of the appeal fee
In T 387/25, also commented in the present blog, the drawings were as well missing at grant, but the board found it equitable to reimburse the appeal fee in spite of the fact that the applicant was not diligent and waited to mention the missing drawings until it received the communication under R 71(3).
Nevertheless similar procedural situations should be dealt with similarly. Procedural aspects before the boards should not boil down to a lottery.
This is, alas, nothing new before the boards.
At least for missing drawings in the communication under R 71(3), a referral to the EBA appears necessary, irrespective of the fact that the applicant was diligent or not..
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