Recent Board of Appeal decision T 1003/19 poses a riddle: when is it not the intention of the EPO to grant the "text-intended for grant? Before the Examining Division (ED) grants a patent application,
they send the applicant a copy of the text-intended for grant (“Druckexemplar”)
(Rule
71(3) EPC). The text-intended for grant is normally considered to be, as the
name suggests, the text that the ED plans on granting. In response to the Rule 71(3)
communication, the applicant approves the text-intended for grant by filing
translations of the claims and paying the appropriate fees. If the applicant approves
the text-intended for grant, the patent is granted.
The application (EP 11846831)
in T
1003/19 related to a method for recovering gold or silver. The international
application on which the EP application was based (WO
2012/076981) contained 7 pages of drawings showing Figures 1-7. Figure
1 on page 1 showed a method of the prior art, whilst the remaining Figures on
pages 2-7 related to the method of the invention.
The applicant did not amend the drawings during prosecution.
However, during examination, the ED began referring to only one page of
drawings (i.e. page 1/1). The text-intended
for grant provided with the Rule
71(3) communication similarly contained only one page of drawings. The applicant
only noticed that pages 2-7 of the drawings were missing after the application
had been granted. The applicant filed an appeal against the decision of the ED
to grant the patent without these drawings.
T
1003/19 related to an appeal from a decision of the ED to grant an
application based on a text-intended for grant in which all but one of the drawings
pages were missing. The applicant had approved the text-intended to grant. In
most circumstances, it is difficult for a patentee to correct mistakes in a granted
patent based on a text-intended for grant that they have approved. As stated in the Guidelines
for Examination: “Since the final responsibility for the text of the patent
lies with the applicant or patentee, it is his duty to properly check all the
documents making up the communication under Rule 71(3)” (H-VI-3.1).
It is difficult to argue, for example, that it was not the intention of the ED
to grant a patent containing a mistake introduced and approved by the applicant
themselves (G
1/10, IPKat post here).
The ED may, on its own initiative,
suggest minor amendments to the text it sends to the applicant for approval. However,
the Examiner should indicate any amendments they make to the applicant.
Case background
 |
| Silver and gold |
Unintentional
intention
The BA considered that, in the case in question, there was enough
evidence demonstrating that it was not the true intention of the ED to grant the
text referred to in the Rule 71(3) communication as the “text-intended for
grant”.
First, the applicant had not submitted amended drawings. According
to Article
113(2) EPC, the EPO must decide on an application based only on text submitted
by the applicant.
Second, removing all the Figures relating to the invention, could
not be said to be a minor amendment by the ED. The BA considered the missing
drawings to be important for determining the scope of the claims (Article
69 EPC) and for providing a method by which the invention could be
performed (Rule
42(1)(e) EPC). Why then would the ED have wanted to remove them? The BA
also noted that the Rule 71(3) communication (or any previous communication from
the ED) did not explicitly indicate that any of the drawing pages had been
deleted.
The BA concluded that the document provided as the text-intended for grant did not correspond to any amendments either requested by the applicant
or explicitly suggested by the ED. The BA argued that it was therefore clear
that the text provided as the text-intended for grant was not, in fact,
intended for grant by the ED (r. 2.4.4). In a nice bit of legal reasoning, the
applicant could therefore not be said to have approved the text for grant (by
paying the fees and filing translations of the claims), because no text-intended
for grant had been provided.
The BA concluded that the applicant had not approved a
text-intended for grant. The BA therefore set aside the decision to grant the
patent.
So, in answer to the riddle, when is the text-intended for grant not intended for grant: when the document provided as the "text-intended for grant" contains significant amendment that 1) potentially render the claims non-compatible with the EPC, 2) were not submitted by the applicant and 3) are never explicitly described to the applicant by the Examining Division.
So, in answer to the riddle, when is the text-intended for grant not intended for grant: when the document provided as the "text-intended for grant" contains significant amendment that 1) potentially render the claims non-compatible with the EPC, 2) were not submitted by the applicant and 3) are never explicitly described to the applicant by the Examining Division.
When is the “text-intended for grant” not intended for grant? (T 1003/19)
Reviewed by Rose Hughes
on
Monday, October 14, 2019
Rating:
Reviewed by Rose Hughes
on
Monday, October 14, 2019
Rating:
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A welcome decision given the exponential rise we are seeing in the number of errors being introduced by Examining Division at the moment. So far in 2019, just of my own cases, I have come across 5 with significant errors (description pages missing or duplicated; drawings missing etc), all of which were the fault of the EPO (either the Primary Examiner or his/her Formalities officer, presumably). Goodness only knows how many such cases there have been across the whole firm/profession.
ReplyDeleteThis is against a backdrop of, I guess, a similar number (5 or 6 ) such cases of mine with this sort of ED introduced error over the whole previous 25 years of practice. No doubt a part of the problem is the unseemly haste to examine and grant applications at the moment. We have tried to escalate this problem with the EPO as it is causing huge problems with disgruntled applicants who are being told that they cannot rectify a problem that is in no way of their making.
As to Alex Frost's "in no way of their own making" I wonder, whether that reminds anybody else but me of a case before Robin Jacob, in which the dispute with the Patent Office was about whether a document had indeed been filed at the Patent Office. Robin Jacob concluded that the representative was the author of Applicant's misfortune, pointing out that there was a good reason why the Patent Office issues receipts for docs filed and if the rep cannot be bothered to check them, any resulting misfortune is his own fault.
ReplyDeleteCan anybody recall the case reference?
But can they file a divisional?
ReplyDeleteNow that we have the EPO post grant limitation proceedings, I really don't know why we cannot have post-grant correction for any error. The EPO has the mechanisms to do this easily, and it should try to be more helpful to applicants/patentees
ReplyDeletePresumably because correction =! limitation?
DeleteHi Anonymous
DeleteI meant the introduction of a new post-grant correction procedure, not use of the existing limitation procedure to correct errors
A post-grant correction is only possible under R 139 or R 140 and G 1/10. However both are not applicable in the present situation
ReplyDeleteFor R 139, there is no error in a document filed with the EPO. For R 140 and G 1/10, there is no reason to correct the text of the patent. In G 1/10, the EBA insisted on the fact that after having approved the text intended for grant, the applicant bears the full responsibility for any error which has not been spotted at the moment he gives his approval.
T 1003/19 is not the only decision in this respect. There is also T 2081/16.
The important lesson to be kept is that checking the documents received with a communication under R 71(3) is a duty of the applicant/representative which should not be taken lightly.
I refer to Point 5.5 of the reasons:
- 5.5 The fact that a narrow interpretation of Rule 71(3) and (5) EPC as proposed by this board and by the board in decision T 2081/16 (see section 2.4. above) allows for an appeal to be treated as admissible should not be misinterpreted as an invitation to neglect the applicant's duty to carefully check both the communication and the "Druckexemplar" sent to it under Rule 71(3) EPC.
In both T 1003/19 and T 2081/16, the applicant realised immediately after the actual grant that something went wrong, and filed an appeal. The BA could also have decided that the appeal is not admissible, as there has been approval by the applicant.
Once the patent has been granted, the possibility of filing a divisional application has gone, cf. R 36(1).
A limitation under Art 105a means clearly a limitation, but not the substitution of faulty documents for the correct ones. This possibility might thus only be working in exceptional circumstances, but cannot be a standard cure for any error which has not been spotted when receiving the communication under R 71(3).
If the applicant realises much later that there is a mistake in the documents annexed to the communication under R 71(3), he is stuck, and has to live with a patent which is in the form approved by him, even if it does not correspond to any of the requests he has filed.
Sending out the communication and mentioning some so-called “minor amendments” is a trick often employed by examiners in order to” twist the arm” of the applicant. By luring him into grant, he hopes to get read of the file and earn the points for the final action.
In T 2346/15, the examiner in charge amended the independent claims in order for them to be clear, cf. comment **Art 84 in the communication under R 71(3), end of sheet 1, beginning of sheet 2. The amendments introduced were offending Art 123(2), but grant was decided.
That the wrong documents may be quoted in the communication under R 71(3) has certainly to do with the haste in which the examiner in charge has to gain his “points”, but it also shows that three member divisions only exist on the paper, as the checking of the documents proposed to grant is the main duty of the second examiner of the examining division. For that work, and the work of chairman of an examining division, no points are awarded.
Techrights: FINGERS OFF!!!, directly or indirectly, even by referring to the other comments, as has recently been done.
In response to Attentive Observer, thank you for your case law and analysis, but I think the EPO has lost sight of the fact it needs to be more 'user-friendly' and it is becoming a place where mistakes have a disproportionate effect. We patent attorneys should not need to be professors or be capable of seeing a small error in 400 pages of description to do our routine job. Can we really say that third parties have been substantially disadvantaged by a patent proprietor reinserting pages into a specification which were clearly missing? It should be far simpler to correct errors, and should not need references to 3 or 4 TBA decisions. In particular the system should not be punitive in any way, which it seems to be whenever it says it was up to the applicant to get it right. As I say the EPO has forgotten it is providing a public service, and should be more user-friendly to its users
ReplyDeleteDear Canada,
ReplyDeleteIt is difficult to say that the EPO is not user friendly when it comes to inserting pages in a specification which were clearly missing.
For a period of two months following filing, or following a corresponding communication of the receiving section of the EPO, an applicant may request inserting missing pages at filing. The drawback is that by then the filing date becomes the date at which the specification is complete. The original filing date might be kept if the missing pages are completely contained in a validly claimed priority document. See R 56. This is a change with respect EPC1973. However, once this time limit of two months has lapsed, no addition is possible.
On the other hand, for the legal security of third parties, they have to know what they are up to. It is for this reason that the case law of the Boards of Appeal is quite strict with respect to added subject-matter. Any addition to the specification after filing, and the two months’ time limit above, is considered as added subject-matter and not allowable.
As stated in my first comment, the conditions upon which a specification can be corrected are very clear and do not give room for interpretation.
The Boards of Appeal have often been criticised for their strict stance on added matter, but it is in my opinion quite justified. One should also keep in mind that added matter and novelty are the two sides of the same coin. What is lost on side is gained on the other. That in other jurisdictions it might be easier to overcome problems of added matter is interesting but irrelevant.
I would also like to remind you that the EPO does not only have a duty towards its users, but after all, it has also the duty to protect the public at large from undue monopolies. Not accepting to add pages missing in a specification is thus part of the responsibility of the EPO towards the public at large.
Thank you Attentive Observer. Added matter, corrections, re-establishment of rights are less strict in all other jurisdictions that I know of. I do not know of any evidence that this has led to third parties suffering in those jurisdictions. The problem is that the EPO Boards of Appeal have allowed themselves to get lost in legal principles which are now far removed from reality. Please objectively think about the very complex tests we have for priority, added matter, due care, etc. Is this really good for people in the R&D community and for the contribution that IP makes to the economy. Look at how difficult and ever more complex EPO case law is becoming in that even the EPO President is disagreeing with the Enlarged Board on issues. No one is pushing for simplicity and efficiency in the procedure.
ReplyDeleteI do not think 'protection for third parties' justifies where the EPO has reached, and the resultant cost, complexity and uncertainty this causes
Thank you though for your very considered and detailed reply. That is appreciated
Dear Canada,
ReplyDeleteIn the absence of any substantive proof, your statement according to which “I do not know of any evidence that this has led to third parties suffering in those jurisdictions.” will remain an unsubstantiated point of view. It requires due respect, but fails to convince.
It will not come as a surprise that I cannot agree with your statement according to which “the EPO Boards of Appeal have allowed themselves to get lost in legal principles which are now far removed from reality. Please objectively think about the very complex tests we have for priority, added matter”.
The criterion/test to decide whether the priority is valid or whether there is added matter could not be simpler: it is the novelty test which has to be applied.
If the information given to the person skilled in the art in a later version of an application, be it when claiming priority or in order to determine added matter, is novel over the information given to the person skilled in the art in the previous version, then the priority is not valid or the application/patent contains added subject-matter.
Is there a simpler criterion than novelty? I know the wording used can look inflated: directly and unambiguously derivable taking into account what is implicit for the person skilled in the art, but stripped to its bare meaning it is nothing more than defining novelty. In that respect the case law of the Enlarged Board of Appeal is quite coherent and everybody knows what matters and were it stands. If, in order to accept any amendment, it needed simply to be obvious to the person skilled in the art the uncertainty created thereby would detrimental to all users of the European patent system. The same applies when it comes to “essential features”.
As far as due care is concerned, it is part of the official policy of the EPO not to accept occasional failure. This wish of the legislator, i.e. the body deciding the Implementing Regulations that is the Administrative Council of the EPO, is to be respected. This has also translated into case law of the Boards of Appeal when it comes to reestablishment of rights. Under EPC2000, there is even reestablishment possible for the priority. This was not possible under EPC1973.
The President of the EPO is disagreeing with the Enlarged Board on a very specific topic: the patentability of plants directly obtained by and/or defined by an essentially biological processes.
That society evolves and such patentability might nowadays pose problems is certain. Rather than trying to push this through by amending the implementing regulations, the only correct way to deal with this problem is, in my humble opinion, to amend the Art 53(b) of the EPC. This has for instance been done in Germany.
Amending the EPC is only possible when a diplomatic conference is summoned, and this is complicated, but this is the only “clean” way to go along. It is clear that calling a diplomatic conference on just this point is neither wise nor useful.
One should not forget that after the first revision in 2000, which was mainly a revision on procedural aspects, there is still a second basket of amendments relating to substantive law to be introduced in the EPC. But some of the topics are highly controversial and handled like a hot potato. This explains the reluctance to amend the EPC.
But trying to twist the arm of the Enlarged Board so that it gives up, for whatever reason, his stance on broccolis and tomatoes does not bode well for the independence of the Boards of Appeal. This should not be forgotten. In this respect I invite you to look at a paper published, albeit in German, about the problem of independence of the Boards of Appeal, see GRUR Int. 2019, 895.
I might have been quite long and I hope you can excuse this, but I felt the need to put the picture straight.
Techrights: FINGERS OFF!!! Directly or indirectly, you know what I mean.
Thank you Attentive Observer. Your comments are very appreciated
ReplyDelete