T 394/10 – No Shortcuts Please

When applicants respond to a notification under R 71(3) by amending what the Examining Division (ED) was ready to grant, they sometimes invite trouble.

In the present case the ED sent a communication under R 71(3) wherein it proposed two amendments : one in the description (where the term “preferably” was to be deleted in one paragraph) and another in claim 1 (where “is chosen from” (“man ... wählt aus ...”) was replaced by “consists of” (“... aus ... besteht”)).

In its reply the applicant requested the correction of an orthographic error and stated that the amendments proposed were not appropriate, in particular because the term “consists” led to an undue limitation of the finish (1) whereas the original expression was open. It therefore requested the patent to be granted without the proposed amendments (main request).

The applicant also filed two auxiliary requests :

• Auxiliary request 1: claims as proposed by the ED, plus an additional feature intended to “open” claim 1 as amended (“wherein the finish (1) may also comprise …”)
• Auxiliary request 2: claims as proposed in the communication under R 71(3).

The ED granted the patent according to auxiliary request 1 (NB: the English and French translations published in the B1 document correspond to the main request).

The applicant filed an appeal and pointed out that the ED had not given any reasons for refusing the main request.

The Board finds this complaint to be justified:

*** Translation from the German ***

[2] Pursuant to A 113(2) the EPO shall examine, and decide upon, the EP application or the EP only in the text submitted to it, or agreed, by the applicant or the proprietor of the patent. In order to ensure [compliance with] this [provision], pursuant to R 71(3), the ED informs the applicant of the text in which it intends to grant it before it decides to grant the patent. This text may include amendments and corrections made by the ED on its own initiative which it can reasonably expect the applicant to accept (Guidelines for examination in the EPO, C-VI 14.1) Pursuant to A 113(2), such an amended version may only be adopted as a basis for the decision if it has been approved by the applicant. This is also explained in the Guidelines E-X 3.

In the present case the applicant has clearly stated that it did not approve the proposed version and has insisted on its original request. Moreover, it has filed two auxiliary requests.

[3] When a main and further auxiliary requests are filed, then [the ED] has to examine the main request first and then the auxiliary requests, in the order given by the applicant. If the ED considers an auxiliary request to be allowable, then it has to inform the applicant and to provide reasons why the higher ranking request(s) cannot be allowed. This way of proceeding is stipulated both in Legal Advice n° 15/05 and in the Guidelines (C-VI 4.1) and is based on the case law of the Boards of appeal (T 1181/04, T 1255/04). It is also to be applied when a main and auxiliary requests are filed in response to a communication pursuant to R 71(3).

[4] The main request filed by the applicant contains an amendment with respect to the version according to the communication pursuant to R 71(3). The applicant has filed translations of the claims of its main request and paid the fees for grant and publication within the time limit under R 71(3). According to R 71(4), it is, therefore, deemed to have approved the grant of the patent as amended. As a consequence, the ED was entitled to immediately grant a patent on the basis of this request alone. If the ED did not consent to the amendments, then, pursuant to R 71(5), it has to give the applicant an opportunity to comment before taking a decision. However, it has not done so.

[5] Therefore, R 71(5) has been violated. At the same time, there has been a violation of A 113(2) because the ED has granted a patent without asking the applicant for its approval beforehand. As a consequence, there have been two substantial procedural violations justifying a reimbursement of the appeal fee pursuant to R 103(1)(a). […]

The case is remitted to the first instance for further prosecution.

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

The file wrapper can be found here.