Key points
- "The application for the patent was filed on 16 June 2016 in Chinese as an international application under the PCT with application number PCT/CN2015/081518. The application was published on 23 December 2015 with number WO 2015/192760 and included sheets 1/3 to 3/3 of drawings. These drawings contained text in Chinese. "
- The applicant does not submit translations of the drawings upon entry of the EP procedure.
- The Rule 71(3) EPC Intention to grant states: "Description pages ... Claims .... No drawings were mentioned." "The text intended for grant, i.e. the Druckexemplar, not containing any sheet of drawings, was attached to the communication."
- The applicant pays the grant fee and expressly indicates approval of the text. The mention of the grant is published 21.08.2019. "No appeal against this decision to grant was filed."
- By letter of 04.11.2019, the applicant requested re-issue of the B-specification of the patent, including the correct applicant's name and the drawings filed with this letter.
- The correction of the name is allowed, the request for adding the drawings is refused by the Examining Decision. This decision is appealed.
- The Board: " further opportunity was given to the appellant when the communication under Rule 71(3) EPC was issued, accompanied by the text intended for grant. At least upon receiving this communication, the appellant should have noted that the text intended for grant did not contain any drawings. Instead, the appellant explicitly approved the text proposed for grant."
- "Article 122(1) EPC is only available for non-observance of a time limit which has the direct consequence of a loss of right or remedy. In the current case, there is no loss of right due to the non-observance of a time limit by the appellant. Therefore, Article 122(1) EPC is not applicable to the case at hand."
- The Board recalls G 1/10.
- "Since no errors have occurred in the process of converting the version as intended for grant into the B-specification, the discussion of affecting third parties is irrelevant. When receiving the communication under Rule 71(3) EPC clarifying the examining division's position on the text intended for grant, the appellant should have realised that to safeguard its interests it should request the inclusion of the drawings. However, the appellant failed to do this and instead approved the proposed text and did not file any appeal. As a consequence, the decision to grant became final (Article 97(1) and (3) EPC)."
- "As stated in point 6 of the reasons of decision G 1/10, "[a]s from its grant, a European patent ceases to be within the jurisdiction of the EPO and becomes, subject only to the possibility of later EPO proceedings by way of opposition or limitation, a bundle of national patents each of which falls within the exclusive jurisdiction of a designated Contracting State (see Article 2(2) EPC)" (emphasis added by the board). Therefore, since in the current case the decision to grant has become final, the EPO, except in opposition or limitation proceedings, has no jurisdiction to change the text of the granted patent or deal with the request for correction."
- " the board concluded that the request for re-issue of the B-specification of the patent by including sheets 1/3 to 3/3 of the drawings as filed on 4 November 2019 is not allowable in view of decision G 1/10."
- As a question for readers, can you do anything before the national patent offices in such cases?
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/2023/07/t-184620-trying-to-get-drawings-in-b1.html
