Wednesday, 7 October 2009

J 4/09 - How to Handle Reproductive Difficulties

This decision deals with the rejection of an application by the Receiving Section (RS). The RS had sent a communication concerning a deficiency of the drawings (R 57 (i) EPC) because it considered that the drawings (Figs. 1 and 2) were not suitable for reproduction. As the applicant did not respond within the time limit, the application was rejected.

[…] The RS considered as a deficiency that the application did not fulfil the requirements of the EPC because the document, as far as Figs. 1 and 2 were concerned, was not suitable for electronic reproduction. Apparently this refers to R 49(2) EPC. This provision stipulates that the documents making up the application shall be presented so as to allow electronic and direct reproduction. The form used for the communication and the formal decision that is based on it leave open why the RS is of the opinion that Figs. 1 and 2 have been presented in a manner that does not allow electronic and direct reproduction.

To begin with, the fact that the figures have been incorporated into the electronic file of the EPO and that an obvious difference with respect to the filed version cannot be ascertained militates against this view. Deficiencies which could, for instance, prevent an unambiguous scanning result have not been concretely identified by the RS.

It is of course commendable and important that the RS strive towards eliminating ambiguities of the disclosure in the version that is to be published by insisting upon the filing of drawings in suitable form, within the framework that R 46 and R 49, paragraphs 1 to 9 and 12, EPC assign to it (moreover taking into account administrative rules such as the Guidelines A-X).

A possible course of action is to repeat the scan procedure in order to exclude technical errors of the EPO and, if this is unsuccessful, to request drawings in a form which improves the recognisability of the original details, the objective being to improve the technical procedure and not the content of the application.

The question as to what information can be gathered from the drawings is not part of the formal examination. Rather, the applicant, by selecting and drafting (Fassung) of the application documents, determines the extent of the disclosure. The informative value (Aussagekraft) of the filed drawings therefore is part of the field of responsibility of the applicant. There cannot be an examination beyond the questions foreseen for the RS in R 46 and R 49, paragraphs 1 to 9 and 12, EPC. In particular, improved drawings may not lead to disclosures that are not comprised in the original version and the applicant may not be obliged to renounce a disclosure that he believes to be possible only in this way, by imposing an amendment of the drawings. As far as amendments in the examination proceedings are concerned, the general rules also apply to drawings. [2] 

The Board then comes to the conclusion that the RS has committed a substantial procedural violation (insufficient reasoning). Nevertheless, reimbursement of the appeal fee is not ordered because the applicant had not filed a response to the RS but had pointed out the apparent contradiction between the allegation of the RS (that the figures were unsuitable for reproduction) and the fact that the figures were reproduced only in its statement of grounds for appeal.

To read the whole decision (in German), click here.