T 926/09 – Confusion

[1] The request for grant of a European patent for this divisional application was received on 23 November 2004. The request indicated the number of claims as 12, but only 8 claims were filed along with it.

[1.1] The Receiving Section (RS) noted this mismatch and, with letter of 28 December 2004, invited the appellant to comment. The appellant explained that it had been its intention to file 12 claims and submitted anew the 12 claims which it believed had been originally filed (see telefax of 5 January 2005).

[1.2] The appellant also suggested a possible confusion with another of its applications, European patent application 04078195.7. The latter application was filed on the same day as the present one, also as a divisional application of the same earlier application, and along with 12 claims although the request for grant mentioned 8 claims.

[1.3] The RS appears to have accepted the appellant’s arguments that there had been a confusion and summarized in a letter dated 25 January 2005 as the “situation” that EP 04078194.0 has 12 claims and EP 04078195.7 has 8 claims. The letter gave no reasons as to why or on what legal basis the new situation was accepted.

[1.4] In both cases, search and examination were based on the claims filed on 5 January 2005. Application no. 04078195.7 has meanwhile proceeded to grant.

[1.5] In the present case the 12 claims submitted on 5 January 2005 were filed before receipt of the European search report, and hence in breach of the prohibition under R 86(1) EPC 1973. Therefore it would seem that, whatever the cause of the confusion, the search and the entire examination procedure was based on a set of claims the admissibility of which was questionable.

[1.6] This question may however be left open since the appellant was entitled to rely on the communication by the RS according to the generally accepted principle of good faith and the protection of the legitimate expectations of parties before the EPO. Therefore the board treats the 12 claims filed with letter of 5 January 2005 as originally filed.

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