Key points
- In this case, the applicant files a patent application online, attaching the Word document as a so-called pre-conversion file. The PDF file and the Word document as actually filed, however, belong to different versions of the application. The case is a divisional application, and two divisional applications were filed shortly after each other.
- The legal basis for the pre-conversion archive is Art. 11 Dec. Pres. OJ 2021 A42: " Technical documents relating to a European or international patent application may in addition be attached to the application in the data format in which they were created, provided the files contain either plain ASCII text or were created with one of the following word processing programs: (a) Microsoft Word 2010 or later ..." However, that notice does not give any indication what this so-called pre-conversion archive can be used for. For PCT applications, reference can be made to Sections 706 and 710 of the Administrative Instructions: " Where it is found that the international application as filed in electronic form is not in fact a complete and accurate copy of the document in the pre-conversion format submitted under paragraph (a), the applicant may, within 30 months from the priority date, request the receiving Office to correct the international application so as to bring it into conformity with the document in the pre-conversion format." Note that: " Where, for the purposes of filing the international application in electronic form, the document making up the international application has been prepared by conversion from a different electronic document format (“pre-conversion format”), the applicant may ... submit, together with the international application, the document in the pre-conversion format,"
- In the case at hand, the PDF file as uploaded was not prepared from the submitted word document, but from a different version of the word document.
- "The applicant requested in essence that the set of claims annexed to the electronically filed application as pdf-file be replaced by the set of claims contained in the zip-file which was also attached to the electronically filed application. "
- The Board: " Such a pre-conversion file is foreseen to be attached if the document attached to the application form (in the present case the pdf-file of the claims) has been prepared by conversion from a different electronic document format. The aim of this is to have the original file available in the case of corruption of the document due to the format conversion. Thus, the pre-conversion file is meant to be taken into account only in order to solve problems which are due to the conversion of document formats. In the present case the set of claims contained in the pdf-file did not show any sign of corruption. "
- " According to Rule 139 EPC, second sentence, the correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction, if the request for such correction concerns the description, claims or drawings. The Board concurs with the appellant insofar as it appears evident that an error occurred when filing the present application in view of the different reference numbers used for the pdf- and the zip-file. However, it is by no means obvious whether the mistake lay in the filing of an incorrect set of claims as pdf-file or whether the reference numbers themselves were incorrectly chosen."
- Note that the Board here looks beyond the four corners of the (PDF) description, under Rule 139, second sentence, where it refers to the " different reference numbers used for the pdf- and the zip-file". Moreover, the pdf file "on the screen" does not show the reference numbers; these can instead be inferred from the "original file name" as shown in the Request for grant form.
- A further procedural twist is that the applicant had filed an earlier appeal, the Examining Division granted interlocutory revision, and then " refused the application again by a second decision".
- " the Examining Division conceded that it had not taken into account one of the essential arguments put forward by the appellant (cf. impugned decision, point 15 of the Summary of Facts and Submissions). This argument was then dealt with by the Examining Division under points 1.3.4 and 1.9 of the Reasons of the impugned decision. Thus, the Examining Division considered the (first) appeal to be well founded due to the aforementioned procedural violation and set aside its decision refusing the application dated 29 November 2018. This handling of the case is thus in line with Article 109(1) EPC (cf. T 647/93, point 2.6 of the Reasons). Thereafter the Examining Division resumed the proceedings in order to consider the applicant's argument which had not been dealt with in the decision of 29 November 2018 and to give the applicant the opportunity to exercise its right to be heard in particular on that point. Since further examination was required the proceedings were resumed which led ultimately to a second refusal of the application."
- " In that regard it is noted that resumption of the proceedings does not rule out a subsequent refusal of the application (cf. T919/95, point 2.1 of the Reasons, with further references; also reflected in the Guidelines for Examination, E-XII, 7.4.1)."
- No request for reimbursement of the appeal fee had been filed in the first appeal, and the examining division hence neither reimbursed the appeal fee nor forwarded a request for reimbursement under (what is now) R.103(6) (see here; the first Notice of appeal and statement of grounds seem unavailable in the online file).
- "[In] the present case the examining division rectified its (first) decision refusing the application in view of the fact that a crucial argument of the appellant had not been taken into account, constituting a violation of the appellant's right to be heard. Thus, the requirements under Rule 103(1)(a) EPC for reimbursement of the appeal fee paid on 8 February 2019 are met and therefore the Board orders reimbursement of that appeal fee."
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2023/01/t-015821-pre-conversion-archive.html
