… that is the question.
This is an appeal against the decision of the Receiving Section (RS) to refuse the applicant’s request for a replacement of drawings under R 56(3).
The application under consideration was filed on June 25, 2010, claiming the priority of a GB patent application. The request for grant of a European patent was accompanied by 15 claims, 13 description pages and one sheet of drawings labelled “Fig 1A.” and “Fig 1B.”. In the description reference is made to Figures 1, 2, 3 and 4, respectively.
On June 29, 2010, the applicant filed two sheets of drawings consisting of Figures 1, 2, 3 and 4 and stated that the drawings filed with the application were incorrect and did not correspond to the specification. On August 5, 2010, the applicant filed a letter stating the following:
The RS was of the opinion that R 56 allows the filing of missing drawings, but not their replacement, without losing the earlier filing date. Figs. 2, 3 and 4 were obviously missing drawings, whereas Fig. 1 was not an obviously missing drawing, since it was present in the application documents as filed on the date of filing. As a consequence, the RS refused to accept Fig. 1 as a missing drawing within the meaning of R 56. It also decided that for the publication of the European patent application according to Article 93 EPC, the documents as originally filed would be used together with Figures 2, 3 and 4 filed on June 29 and August 5,2010.
The applicant filed an appeal against this decision.
 R 56 reads in relevant parts:
“(1) 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. …
(2) 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. The EPO shall inform the applicant accordingly.
(3) If the missing parts of the description or missing drawings are filed within the period under paragraph 2, and the application claims priority of an earlier application, the date of filing shall, provided that the missing parts of the description or the missing drawings are completely contained in the earlier application, remain the date on which the requirements laid down in R 40(1) were fulfilled, where the applicant so requests and files, within the period under paragraph 2:
(a) a copy of the earlier application, unless such copy is available to the EPO under R 53(2); ...”
 In the present case in the description as filed reference is made to Figures 1, 2, 3 and 4 […]. However, no drawing labelled “Fig.1” was part of the application received on 25 June 2010. Drawing Fig. 1 together with drawings Figs. 2, 3 and 4 were filed by the applicant under R 56(2) of its own volition and were received on 29 June 2010, and a copy of the earlier application, which contained Figs. 1, 2 3 and 4, was received on 5 August 2010; both dates are within the time limit of two months from the filing date (25 June 2010). Consequently, pursuant to R 56(3) the date of filing remains 25 June 2010, i.e. the date on which the requirements of R 40(1) were fulfilled. The incomplete application documents filed originally are to be completed by the missing parts, which must be added to the text of the application filed originally.
 The RS correctly states that R 56 does not allow any replacement of drawings. An interpretation of R 56 that some, or all, of the application documents that were originally filed in order to obtain a filing date could be amended, replaced or deleted would indeed be incorrect (see decision J 27/10 [8-18]).
However, the filing of drawing Fig. 1 does not replace any Fig. 1 filed earlier in a legal sense.
R 56(1), first sentence, refers to drawings referred to in the description or in the claims, which appear to be missing. Hence, where a drawing referred to in the description is missing in the application documents as filed. R 56 is applicable and the said drawing can be filed later in accordance with the procedure laid down in R 56.
As set out above, no drawing labelled “Fig.1” was part of the application received on 25 June 2010. The drawings “Fig.1A” and “Fig.1B” are not a “Fig. 1” as stated in the decision under appeal and therefore the later filing of “Fig. 1” is not a replacement of the aforementioned figures but constitutes the filing of a figure referred to in the description but missing from the application documents as filed.
 The Board therefore concludes that Fig. 1 has to be treated as a missing drawing in accordance with R 56(3) and (2). Fig. 1 must be added to the application documents already filed, with no ensuing change of the original filing date of 25 June 2010. Consequently, the EPO will also have to provide for a publication of drawing Fig. 1.
I understand this to mean that if the originally filed figures had been labelled “Fig. 1”, then they could not have been replaced by the ‘new’ “Fig.1”.
Also, although the decision is silent on this matter, I would think that the Figures 1A and 1B still are part of the application as filed and can only be deleted via an amendment.
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