J 27/10 – Missing

 This decision – the knowledge of which I owe to a kind reader of this blog – deals with an appeal against a refusal of a request by the Receiving Section (RS).

The application under consideration was filed on August 13, 2009 and claimed the priority of a U.S. application that had been filed on August 14, 2008 (hereinafter “priority application”).

The application documents filed with the EPO contained, apart from the claims and the abstract, description pages 1 to 15 and a set of drawings, comprising Fig. 1 to Fig. 12. The description referred to “Fig. 13”, “Fig. 14” and “Figs. 10-14”

In a communication pursuant to R 56(1) of 18 September 2009, the RS informed the applicant that the examination as prescribed in A 90(1) had revealed that the drawings “Figures 13 & 14” referred to in the description were not included in the original application documents. The applicant was invited to file the missing drawings within two months after notification of said communication. The applicant was also informed that

• if the missing drawings were filed in due time, the application would be re-dated to the date on which they were filed (R 56(2));
• the application would not be re-dated if it claimed priority of an earlier application and it was requested to maintain the original filing date, provided the requirements under R 56(3) were fulfilled;
• if the missing drawings were not filed in due time, according to R 56(4), any reference to the missing drawings would be deemed to be deleted and any filing of the missing drawings would be deemed not to have been made.

In its reply dated November 4, 2009, the applicant filed a new description and requested, pursuant to R 56(3), that this description be substituted, in its entirety, for the description filed on 13 August 2009 and that the date of filing be maintained unamended. The applicant submitted that the description filed on August 13, 2009 was the wrong version of the description and had been erroneously filed with the EPO and that the newly filed description was the correct version and corresponded exactly and in its entirety to the description of the priority application. The applicant further submitted that Figs. 13 and 14 were not supposed to form part of the present application since they did not appear in the priority application and that therefore the correct version of the drawings was already filed with the EPO on 13 August 2009.

In the applicant’s view the conditions laid down in R 56(3) were fulfilled since a copy of the priority application in English was already available to the EPO under R 53(2) and the indication of where the missing parts of the description could be found was given.

In a communication dated January 18, 2010, the applicant was informed of the RS’s preliminary opinion that the documents filed on November 4, 2009 did not qualify as “missing parts” according to R 56(1) since they were not merely parts of the description but appeared to be a different description, substituting the originally filed description.

In a letter dated March 29, 2010, the applicant maintained his request for substitution of the description and asked for an appealable decision, rejecting that request. As an auxiliary request, the applicant requested deletion of the references to Figs. 13 and 14 from the description filed on August 13, 2009, pursuant to R 56 (4).

In its decision dated August 2, 2010, the RS refused the appellant’s main request and allowed the auxiliary request. According to the RS, it was not possible to replace an entire description under R 56. R 56(3) constituted an exception to the fundamental provision of A 123(2). Although neither the EPC nor the travaux preparatoires defined the term “missing”, it followed from this exceptional character of R 56 that it had to be given a narrow reading. As the requirements of R 56(3) were not fulfilled the description filed on November 4, 2009, could not be considered to form part of the application as filed on August 13, 2009.

As far as the auxiliary request under R 56(4) was concerned the following was stated in the reasons:

“Since drawings 13 and 14 were not filed within the applicable time limit, the references to said drawings in the description filed on 13 August 2009 are deemed to be deleted pursuant to R 56 (4)(a)”.  

The applicant filed an appeal.

Here is the verdict of the Board:

Main request

[2] As regards the appellant’s main request, R 56 is the relevant provision which most closely corresponds to the provisions of Article 5(6) of the Patent Law Treaty (PLT). R 56 was introduced after the Revision of the EPC (EPC 2000) (see decision of the Administrative Council of 7 December 2006 amending the Implementing Regulations to the EPC 2000 (Special edition No. 1, OJ EPO 2007, 89)) and entered into force on 13 December 2007 (see Article 3 of said decision of the Administrative Council).

[3] A 90(1) provides that the EPO examines, in accordance with the Implementing Regulations to the EPC, whether the application satisfies the requirements for the accordance of a date of filing.

If the examination under A 90(1) reveals that parts of the description, or drawings referred to in the description or in the claims, appear to be missing, the EPO shall invite the applicant to file the missing parts within two months (R 56(1), first sentence).

[4] It is not literally stipulated in R 56 that the applicant may also file of his own motion missing parts of the description or missing drawings (i.e. without being invited to do so by the EPO). However, R 56(2), first sentence, reads:

“If missing parts of the description or missing drawings are filed later than the date of filing, but within two months of the date of filing or, if a communication is issued under paragraph 1, within two months of that communication, the application shall be re-dated to the date on which the missing parts of the description or missing drawings were filed.”

From this wording it is clear that the applicant may also file of his own motion missing parts of the description or missing drawings. This approach is in line with the intention of the legislator (see travaux preparatoires, CA/PL 5/02, 18 June 2002, Explanatory remarks, page 12 regarding R 39a (which is the former provision of R 56 in the travaux preparatoires)). The board also notes that this approach is reflected in the instructions to the EPO (see Guidelines for Examination in the EPO, April 2010, A-Chapter II, 5.2).

[5] If the applicant files missing parts of the description or drawings within two months from the filing date or the communication under R 56(1), the application will be re-dated to the date on which the missing parts of the description or drawings were filed (R 56(2), first sentence). If, however, the application claims priority, the missing parts of the description or missing drawings which were completely contained in the priority application may, if the requirements of R 56(3) are met, be included in the application without loss of the original date of filing.

[6] In the present case, the appellant did not file the drawings 13 and 14 as the RS invited him to do. Instead, on 4 November 2009, the appellant filed a new description which was to replace the description originally filed on 13 August 2009 in its entirety. In comparison to the description filed on 13 August 2009, words were deleted and added in the text of the new description.

[7] The appellant submitted that the description filed on 13 August 2009 was the wrong version of the description and had been erroneously filed with the EPO and that the newly filed description was the correct version and corresponded exactly and in its entirety to the description of the priority application. The appellant essentially argues that, since the present application claims priority, only the provisions of R 56(3) were relevant for determining “missing parts” according to R 56. A different test applied in the present case than in cases where no priority was claimed. For cases where no priority was claimed R 56(1) was the relevant provision. Consequently, in the appellant’s view, the initially filed text of the description of the present application could be partly or fully replaced by documents which were intended to be filed on 13 August 2009. Such partial or full replacement was justified because these documents were identical with those of the priority application.

[8] The main issue is therefore how the term “missing parts of the description” in R 56 is to be construed and whether, for determining “missing parts of the description”, different tests apply, depending on whether the application claims priority or not.

[9] Neither the EPC nor the travaux preparatoires concerning R 56 (or former R 39a) contain a definition of the term “missing parts of the description”. Therefore, this term must be construed.

[10] The board considers that the same interpretation is to be given to the term “parts of the description … appear to be missing” R 56 (1), first sentence, as to the term “missing parts of the description” in the subsequent paragraphs of R 56 for deciding if a part is missing from the description. This term is also used in the title of the whole provision. The board also considers that the terms “missing parts of the description”) “Fehlende Teile der Beschreibung” and “Parties manquantes de la description” have the same meaning in all three language versions.

[11] In the board’s understanding the term “description” in “missing parts of the description” refers to the description which was originally filed in order to obtain a filing date and not to any other description, such as, for example, the one the appellant actually intended to file or the description of a priority application. In its literal sense the term “missing parts of the description” indicates that some parts of the description are missing or absent but other parts of it have been filed. From this the board concludes that the incomplete originally filed description is to be completed by the missing parts which must be added to the already filed text of the description.

[12] Thus an interpretation of R 56 that some, or all, of the description that was originally filed in order to obtain a filing date could be amended, replaced or deleted is incorrect.

[13] The above conclusion is supported by a reading of R 56. R 56(1) concerns the situation where the examination by the RS “on filing and as to formal requirements” pursuant to A 90 leads the RS to consider that a complete description or set of drawings has not been filed. This formal examination can only be performed on the basis of the text and documents of the application as originally filed in order to obtain a filing date. Thus the term “missing parts of the description” must be read as parts missing from the application documents as originally filed in order to obtain a filing date.

[14] R 56(2), first sentence, concerns the situation where the applicant files “missing parts of the description” on its own motion. The RS has still to examine whether or not the subsequently filed parts of the description are missing from the initially filed description. There is no basis in R 56 that, regarding missing parts of the description, the examination criteria is the correctness of the initially filed application documents with respect to the appellant’s true intentions.

[15] R 56(3) explicitly refers to “the missing parts of the description … filed within the period under paragraph 2 …” (emphasis added by the board). The board concludes from this wording that the term “missing parts of the description” in R 56(3) has the same meaning as in the preceding paragraphs of R 56 (R 56(2) refers to paragraph (1) of R 56) and constitutes a requirement which must be fulfilled in order to comply with R 56(3).

[16] The board does not consider that, for establishing whether the applicant filed “missing parts of the description” under R 56, different tests apply, depending on whether priority from an earlier application was claimed or not.

[17] In the board’s view, R 56(3) provides the possibility to keep the initial filing date although “ the missing parts of the description” were filed after the date of filing: If the applicant files “the missing parts of the description” of its own motion or upon invitation from the EPO within the period of R 56(2) and the application claims priority from an earlier application, the date of filing does not change upon the applicant’s request, provided that, inter alia,

(1) the missing parts of the description are completely contained in the earlier application;

(2) the applicant files a copy of the earlier application (priority document) within the period under R 56(2), unless such copy is already available to the EPO under R 53(2);

(3) the applicant indicates within the period under R 56(2) as to where the missing parts of the description are completely contained in the earlier application.

[18] It follows from the provisions of R 56(3) that, as far as the filing date of the application is concerned, R 56(3) provides, if all its requirements are fulfilled, an exception to the principle laid down in R 56(2) according to which an application is usually re-dated if “the missing parts of the description” were filed after the date of filing. However, there is no indication in R 56(3) that it refers to a different type of “missing parts of the description” than those referred to in its preceding paragraphs or that, for determining “missing parts of the description”, a different test applies, if the application claims priority from an earlier application. There is also no indication in R 56(3) that a description filed after the filing date of an application may substitute the description as originally filed, either partly or in its entirety.

The board does also not consider that a comparison of the description and/or drawings of the application as originally filed in order to obtain a filing date with those of the priority application is to be made in order to determine the missing parts of the description within the meaning of R 56. Thus the board does not consider that the differences between the application as originally filed in order to obtain a filing date and the priority application, are the “missing parts” within the meaning of R 56. The wording of R 56(3) clearly indicates that the disclosure of the priority application is only of importance for establishing whether an application, for which indeed missing parts of the description were filed within the period under R 56(2), may keep its initial filing date upon the applicant’s request. If these missing parts of the description are not completely contained in the priority application, the application has to be re-dated in accordance with R 56(2) or (5).

Thus, for determining “the missing parts of the description”, it is irrelevant whether any subsequently filed description corresponds exactly and in its entirety to the description of the priority application.

[19] In view of the above, the board concludes that, when applying R 56(3) in the present case, it has firstly to be established whether the description filed on 4 November 2009 is to be considered as “missing parts of the description” within the meaning of R 56(1) to (3).

For this purpose the version of the description filed on 4 November 2009 has to be compared with that filed on 13 August 2009.

[20] A comparison of the version of the description filed on 4 November 2009 with that filed on 13 August 2009 reveals that the later filed description does not complete the earlier filed description by adding missing parts but that the text of the earlier filed description is amended, replaced and deleted by the later filed description. The appellant also admits that the later filed description is intended to substitute parts of the earlier filed text of the description. Thus according to the board’s interpretation of the term “missing part of the description”, the appellant did not file missing parts of the description. Hence the requirements pursuant to R 56, in particular those of paragraphs (2) and (3), are not met in the present case.

[21] Since the requirement of “missing part of the description” is not met in the present case, the issue of whether the appellant was entitled under R 56(1) or (2) to file parts other than the missing figures 13 and 14 in response to the EPO communication dated 18 September 2009 need not be addressed.

[22] It follows from the above that the appellant’s main request is not allowable under R 56.

Auxiliary request

[23] The appellant requested, as its auxiliary request, to remit the case to the RS with the order to specify exactly what references to drawings 13 and 14 in the description and/or claims should be deleted pursuant to R 56(4) (a). This auxiliary request is allowable for the following reasons.

[24] The appellant did not comply with the EPO invitation of 18 September 2009 under R 56(1) to file missing figures 13 and 14 within 2 months of said communication. Thus all references to the missing drawings 13 and 14 in the description or in the claims are deemed to be deleted in accordance with R 56(4) (a) and (1).

[25] In the reasons of the appealed decision, the RS concluded that the references to said drawings in the description filed on 13 August 2009 are deemed to be deleted pursuant to R 56(4) (a), but did not exactly specify what references to the drawings in the description and/or claims are deemed to be deleted.

[26] In the present case, however, this information is of great importance for the appellant as can be seen from the following relevant passages of the ‘description as originally filed.

The relevant passages on page 9 read as follows:

“Fig. 13 is a close-up view of a spring-loaded front latch which can be used to secure the front section of the cart of the invention to a corresponding front section of a portable blower housing;

Fig. 14 is a close-up view of a spring-loaded rear latch which can be used to secure the rear section of the cart of the invention to a corresponding rear section of a portable blower housing.”

The relevant sentence on page 15 read as follows: “In a preferred embodiment, blower housing 201 i s secured to rotary member 102 by means of a spring-loaded hook latch 202 attached to a front wall 204 of rotary member 102, and a spring-loaded locking latch 203 attached to a rear wall 205 of rotary member 102 (see. Figs. 10-14).

[27] It is clear that the above passages of the description, apart from the references to the missing figures 13 and 14, possibly contain further technical information. If the references to the missing figures 13 and 14 are deemed to be deleted, it has to be determined whether any technical information in the relevant passages is still technically meaningful without the references and may therefore be retained. Moreover, if apart from the references to the missing figures 13 and 14 any technical information is deleted in the description, it has to be examined whether anything else has to be deleted in the claims.

[28] The principle of legal certainty requires that the decision upon the deletion of parts of the description pursuant to R 54(4)(a) leaves no doubt about what exactly is deemed to be deleted. In some cases it might be sufficient that the decision merely orders that the references in the description to figures are deemed to be deleted. However, in the present case, it is not clear which words or sentences are deemed to be deleted and, therefore, the RS should have determined which words or sentences were addressed.

Thus, it has to be specified what exactly is deemed to be deleted as the deletion could only concern e.g. on page 9 the words “Fig. 13 is a close up view of” or could include the following words of the whole sentence or paragraph.

[29] Since the RS has not specified exactly in the decision under appeal what references to the drawings 13 and 14 in the description and/or claims are deemed to be deleted, the board considers it appropriate to remit this case to the department of first instance in accordance with A 111(1), second sentence.

[30] However, the board wishes to point out by way of an obiter dictum that if the RS would have to base its decision on this issue on the result of a technical examination, which does not normally form part of its duties under A 16 and A 90, the decision on exactly what references to the missing figures 13 and 14 are deemed to be deleted might lie within the competence of the Examining Division (see J 4/85; J 33/89 and J 7/97).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.
2. The case is remitted to the RS with the order to specify exactly what references to drawings 13 and 14 in the description and/or claims filed on 13 August 2009 should be deleted pursuant to R 56 (4) (a).

NB: The Board also provided a headnote:

1. The same interpretation is to be given to the term “parts of the description ... appear to be missing” in R 56(1), first sentence, as to the term “missing parts of the description” in the subsequent paragraphs of R 56 for deciding if a part is missing from the description. The term “description” in “missing parts of the description” in R 56 refers to the description which was originally filed in order to obtain a filing date and not to any other description. The incomplete originally filed description is to be completed by the missing parts which must be added to the already filed text of the description. Thus an interpretation of R 56 that some, or all, of the description that was originally filed in order to obtain a filing date could be amended, replaced or deleted is incorrect. (See points [8] to [18])

The principle of legal certainty requires that the decision upon the deletion of parts of the description pursuant to R 54(4) (a) leaves no doubt about what exactly is deemed to be deleted. (See point [28]) 

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