Key points
- The Board considers the appeal of the applicant against the grant to be admissible and allowable.
- In the Intention to grant, the drawings were no longer included, without this being marked in any way. There had been no amendment of the drawings. The applicant did not notice and paid the fee and filed the translated claims.
- “Normally the documents indicated in a communication according to Rule 71(3) EPC correspond to the applicant's request and to the examining division's intention; however, in a case where there appears to be severe doubts as to whether the documents indicated in Rule 71(3) EPC were actually those intended to be granted by the examining division, the Board considers the [herein after described] clarification of the "true will" of the examining division an appropriate means.”\
- “When trying to clarify the intention behind an action or request, this is frequently done in the Case Law of the Boards of Appeal by identifying the "true will" of the actors in a case. This applies to the will of the applicant/appellant [] as well as of the examining division (e.g. T 843/03, point 1 of the Reasons; T 762/05, point 1 of the Reasons; T 1869/12, headnote). Even the Enlarged Board's decision, G 1/12, elaborates in detail on the notion of the "true intention" behind an action performed”
- “the Board concludes that the examining division did not indicate in the communication according to Rule 71(3) EPC the text it intended to grant for the following reasons:”
- “The examining division therefore did not communicate the text it intended to grant by using Form 2004C. Following T 2081/16 (point 1.4.5 of the Reasons) and T 1003/19 (point 2.4.5 of the Reasons), Rule 71(5) EPC correspondingly does not apply in this case, as in the step preceding the deemed approval the applicant has to be informed of the text in which the examining division intends to grant the patent according to Rule 71(3) EPC. Although the (then) applicant received a Rule 71(3) EPC communication, the documents indicated were not those which the examining division intended to grant.”
- “The Board is aware of decision T 265/20, in which the competent Board did not follow the approach of the above-cited decisions T 1003/19 and T 2081/16 without considering it necessary to refer a question to the Enlarged Board of Appeal. This case is distinguished from said decision not least in the fact that, as outlined above, the Board could identify convincing reasons why the examining division's true intention was not reflected by the text of the Rule 71(3) EPC communication, whereas the Board in case T 265/20 was not in a position to draw such a conclusion for "the case at hand" ”
- As a comment, I don't see a relevant difference in the facts. The present Board does not identify the actual error of the Formalities Officer.
- “This Board considers that the detailed reasons given in T 1003/19 and T 2081/16 are fully convincing and, in cases such as this, lead to a result that prevents the patent applicant from being seriously prejudiced by the absence of a possibility to request corrections under Rule 140 EPC (see G 1/10, points 8 to 12 of the Reasons). Therefore, the Board sees no need for and refrains from its own referral to the Enlarged Board.”
T 0408/21 -
https://www.epo.org/law-practice/case-law-appeals/recent/t210408eu1.html
Summary of Facts and Submissions
I. The applicant's (appellant's) appeal lies from the examining division's decision dated 14 January 2021 to grant a patent on the basis of application documents as indicated in a communication under Rule 71(3) EPC dated 24 August 2020 following the examination of European patent application No. 13 855 497.7.
II. The original application contained
- description pages 1 to 14,
- claims 1 to 19 and
- drawing sheets 1/6 to 6/6 with figures 1, 2a, 2b, 3, 4 and 5.
III. In the extended European search report all parts indicated above were properly listed. In the course of examination proceedings the examining division issued communications pursuant to Article 94(3) EPC on 2 November 2017, 11 July 2018 and 12 August 2019. Throughout the proceedings before the examining division, amendment or deletion of the drawing sheets was never suggested by the examining division nor requested by the appellant.
IV. On 24 August 2020 a communication under Rule 71(3) EPC was sent to the appellant informing them of the examining division's intention to grant a European patent on the basis of its application, listing the following parts:
source http://justpatentlaw.blogspot.com/2021/07/t-040821-allowable-appeal-against-grant.html
