EP 3 777 577 A1 originally published as WO 2019/186669 relates to an aerosol generation device, a control method and a program.
Brief outline of the case
The proprietor appealed the decision to grant as 48 drawings originally filed were omitted at grant. A total of 52 drawings were present in the English translation of the application entering the European phase.
The board considered that the ED had committed a substantial procedural violation, but refused to reimburse the appeal fee.
The proprietor’s point of view
In the statement of grounds of appeal, the applicant argued that the appeal is admissible, as they are adversely affected by the omission of 48 drawings that were part of their request in the decision to grant a patent.
They also argued that the decision under appeal suffered from several SPVs.
The most relevant in the present case is that the text communicated under R 71(3) cannot be considered as the text “intended” to be granted. Therefore, no explicit or deemed approval to the text was given by the appellant which referred to T 2081/16, T 1003/19, T 0408/21.
The board’s decision
Admissibility of the appeal
The appeal is admissible since the appellant was adversely affected by the omission of 48 out of 52 drawings in the decision to grant. The granted version of the patent corresponds neither to the text submitted by the applicant, nor to a text agreed upon or deemed approved by the applicant.
The communication under R 71(3) proposed amendments to the description and to claim 1 but did not indicate that the text intended for grant differed from the applicant’s request regarding the drawings.
The file contains no explicit approval from the applicant for the removal of the remaining 48 originally filed drawings. It appears that neither the members of the ED nor the applicant realized that the original drawing sheets 1/52, 2/52, 4/52 to 27/52, 29/52 to 36/52, 38/52, 39/52 and 41/52 to 52/52 were omitted and only the amended drawing sheets 3/52, 28/52, 37/52 – renumbered 1/4- 4/4 – were considered by the ED.
For the board, 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 stand-alone provision. Simply paying the fee and filing translations does not trigger deemed approval regardless of the communicated text’s content.
This conclusion 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.
However, if the communicated text does not reflect the ED’s intention 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.
In the case at hand, it can only be concluded that the omission of the 48 drawings as originally filed was never intended by the ED. The ED never raised any objections to the original filed drawings, nor did it provide any reasons for deleting drawing sheets 1/52, 2/52, 4/52 to 27/52, 29/52 to 36/52, 38/52, 39/52 and 41/52 to 52/52.
The description in the “Druckexemplar” annexed to the R 71(3) communication still lists all figures 1-52 and repeatedly refers to the deleted figures. However, the “Druckexemplar” only contains 4 figures.
The designation of the drawing sheets in the R 71(3) communication as “1/4 – 4/4”. is inconsistent with the drawing sheets included in the annexed “Druckexemplar”, which are labelled “3/52”, “28/52”, “37/52” and “40/52”.
If the applicant is not communicated the text intended for grant under R 71(3), the legal consequence outlined in R 71(5) does not apply. Therefore, the applicant’s subsequent filing of translations and payment of fees for grant and publishing does not imply approval of the communicated text.
Allowability of the appeal
Next to considering that the ED had committed a SPV, the board was aware of decision T 0265/20, which also involves an appeal against the decision to grant a patent due to discrepancies between the appellant’s explicit requests during the examination and the content of the B1 publication.
Although said board acknowledged the admissibility of the appeal, it did not follow the approach taken in T 1003/19 and T 2081/16, and ultimately dismissed the appeal.
The present board, did not consider T 0265/20 to represent diverging case law, as the circumstances of the two cases are different.
in T 0265/20 no drawings were included in the R 71(3) communication. Thus, there was no inconsistency between the designation of the drawing sheets in the R 71(3) communication and the “Druckexemplar”, unlike in the current case.
There was thus no reason to view T 0265/20 as diverging from the present decision, which aligns with T 1003/19 and T 2081/16.
Reimbursement of the appeal fee
The request for reimbursement of the appeal fee was withdrawn by the applicant and the board on its own did not consider reimbursement equitable in this case, despite the SPV affecting the decision under appeal.
The applicant had several opportunities during the examination proceedings to identify the error regarding the drawing sheets.
All communications from the examining division under Art 94(3), stated that the examination of the figures was conducted solely on the amended drawing sheets 1/4-4/4, as submitted upon entry into the regional phase before the EPO. This error was also present in the communication under R 71(3).
The applicant could and should have identified the error at the latest when reviewing the text in the R 71(3) communication. Consequently, the applicant did not take advantage of the available opportunities to participate in the initial proceedings, cf. J 04/09, Reasons 4.
Comments
The present decision reminds that the “Druckexemplar” has to tie up with the mentions in the communication under R 73(1). In case of discrepancies, the communication under R 71(3) does not represent the intention of the ED.
The decision is interesting in that the board considered that, should the communication under R 73(1) not correspond to the intention of the ED, the payment of the granting fee and the filing of translations under R 71(5) have no legal consequence.
It is clear, that the ED’s work can be considered as suboptimal, as neither the second member nor the chairperson of the ED noticed the discrepancies.
However, the applicant is not without blame either. As the board points out, the applicant could and should have identified the error at the latest when reviewing the text in the R 71(3) communication.
Hearing regularly complaints of applicants with the amendments carried out by the ED at the R 71(3) stage, often resisted by them, it is surprising that the applicant did not react. This is the more so since the problem of the missing drawings was present all along examination.
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