J 2/12 – When Wrong Means Missing

This decisions presents us with a complex procedural situation, and a quite liberal interpretation of R 56. The appeal was filed against the decision of the Receiving Section (RS) refusing various requests of the applicant under R 56.

The application had been filed on April 18, 2008 with a description, 13 claims and 10 sheets of drawings numbered 1/11 to 10/11, comprising Figures 1 to 10 respectively. The application claimed priority from a Japanese application.

On June 23, 2008 the EPO issued a communication under R 56(1) and A 90(1), in which it informed the applicant that “Figure 11”, which was mentioned and described on page 13 of the description, was missing. The applicant was invited to file the missing Figure 11 within two months.

With a letter dated June 30, 2008 the applicant filed a set of drawing sheets numbered 1/11 - 11/11, comprising Figures 1 to 11 respectively, as “replacement drawings”. Figures 1 to 10 were different drawings to those submitted with the application, and sheet 11/11 showed a Figure 11. The applicant requested that the date of filing of the application remain April 18, 2008. It noted the newly filed drawings were identical to those filed with the Japanese application, from which priority was claimed.

By letter dated August 11, 2008 the applicant requested that an additional priority claim (to a U.S. application) be added. The applicant enclosed a certified copy of this document which contained 11 drawing sheets numbered 1/11 to 11/11 comprising Figures 1 to 11 respectively. On August 22, 2008 this request was granted and confirmed to the applicant.

In a further letter, the applicant stated that as a result of an error in the representative’s office the drawings as originally filed were not the drawings intended to be filed. The correct drawings were those filed with the letter of June 30, 2008. For the purposes of R 56(3) the applicant relied on the US priority application instead of the Japanese priority application for its main request, and on the latter application as an auxiliary measure. The applicant stated that the drawings filed on 30 June 2008 were completely contained in the US priority application.

In its decision, the RS dismissed all requests. It noted that the references to Figure 11 in the application should be deemed not to have been made. No matter which of the two priority applications were taken into consideration, the newly filed drawings could not be accepted. R 56(3) could not be used to correct errors in the original application by the filing of a new set of drawings. Rather, the rule was applicable in cases where an application was completed by the filing of missing parts, in particular if they have been omitted.

What was the verdict of the Legal Board?

For those who have little time, here is the headnote:

Where (a) the description as filed with an application includes references to numbered drawings and (b) drawings with corresponding numbering are also filed with the application, different drawings may nevertheless be filed later under R 56 as “missing drawings” if it can be established without having to apply technical knowledge that the drawings originally filed with the application are not the drawings referred to in the description and that the later-filed drawings are the drawings referred to in the description (see point [9]).

For the others, please read on:

[2] The question arising in this case concerns what are to be considered as “drawings referred to in the description [that] appear to be missing” or as “missing drawings”. The answer has in particular a decisive impact on cases in which the application claims priority from an earlier application in which the allegedly missing drawings are completely contained. Under R 56(3), the application date may then remain unaltered and does not have to be re-dated to the date when the correct drawings were subsequently filed.

[3] (a) R 56 reads in its relevant parts:

“(1) If the examination under Article 90, paragraph 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. (…)

(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 Rule 40, paragraph 1, were fulfilled, where the applicant so requests and files, within the period under paragraph 2; …”.

(b) A 90(1) provides that the EPO shall examine, in accordance with the Implementing Regulations to the EPC, whether the application satisfies the requirements for the accordance of a date of filing. The particular requirements are found in R 40 and R 42.

[4] 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 missing drawing can be filed later in accordance with the procedure laid down in R 56.

[5] In the present case the RS appreciated that Figure 11, referred to in the description, was missing. The [applicant] then not only filed the missing Figure 11 as the RS had invited it to do, but it also filed a new set of drawings consisting of sheets 1/11 to 10/11, these sheets comprising Figures 1 to 10 respectively. These drawings were to take the place of the sheets with Figures 1 to 10 filed before.

[6] It has been decided by the Legal Board of Appeal that while it is not expressly stipulated in R 56 that an applicant may file on his own motion missing parts of the description or missing drawings, an applicant may nevertheless do so (decision J 27/10 [4]). Thus, the [applicant] was entitled to file on its motion matter that it considered to be missing.

[7] The references to “missing” drawings appearing in each of paragraphs (1) to (3) of R 56 must be interpreted consistently with each other to give a meaningful effect to the rule as a whole (see also J 27/10 [10]). In this respect the Board considers that the “missing drawings” which are referred to in R 56(2) and (3) are the same as the “drawings referred to in the description or in the claims [which] appear to be missing” referred to in R 56(1). There are thus two questions which need to be answered: (1) Does an examination of the application reveal that “drawings referred to in the description” appear to be missing? (2) Were the drawings which the [applicant] filed on 30 June 2008 (the) “missing drawings”?

[8] As to the first question, in the simple case where drawings are referred to in the description but no drawings are filed, the answer will clearly be yes. The same is true where, as in the present case, the description referred to Figures 1 to 11, but no Figure 11 was filed: Figure 11 was clearly missing (see also J 15/12). In the Board’s view, however, there are other situations in which drawings referred to in the description can be said to be missing within the meaning of R 56. So, for example, in the present case the description referred inter alia to Figure 1, which in the Brief Description of the Drawings was said to illustrate an “overall configuration of a tandem-type color image forming apparatus according to the exemplary embodiment of the present invention.” In the Detailed Description of the Embodiments, Figure 1 was further said to illustrate such an apparatus according to the first embodiment of the invention, this embodiment then being described in detail by reference to this drawing. This was done by reference to numerous named and numbered features which were apparently to be found in the drawing. Figure 1 as originally filed, however, while it relates to something called an “Image Processing Apparatus”, contains named and numbered features, none of which are to be found in the description. Similarly, none of the numerous named and numbered features referred to in the relevant passages in the description are to be found in the drawing. It is immediately apparent that the drawing originally filed as Figure 1 is not the Figure 1 referred to in the description. There is simply no correspondence between the description and the drawing at all. Therefore Figure 1 referred to in the description is not Figure 1 as originally filed; the drawing is missing. The same is also true, mutatis mutandis, for each of Figures 2 to 10.

[9] The Board takes full account of the fact that, as was correctly pointed out in the impugned decision, the RS is not expected to carry out any substantial examination which requires explicitly technical knowledge. The RS will not normally do anything more than check that the number of drawings filed corresponds to the number of drawings referred to in the description (as apparently happened in the present case). However, once one’s attention has been drawn to the point it is immediately apparent that the Figures 1 to 10 referred to in the description are not the Figures 1 to 10 as originally filed. As explained above, to appreciate this, one does not need to have any notion of what a tandem-type colour image forming apparatus might be or to understand what the relevant passages of the description are talking about or what the drawings originally filed in fact illustrate. In other cases it may be that such a conclusion cannot be reached so readily but the Board does not have to consider where in general the dividing line should be drawn in such cases. This is because in the present case it is not in doubt that drawings referred to in the description were missing.

[10] The Board therefore concludes that “drawings referred to in the description appear to be missing” from the application as filed (R 56). The Board therefore disagrees with the conclusion of the RS that R 56 is not in any circumstances applicable where the “wrong” drawings are filed as opposed to where an incomplete set of drawings is filed […]. The RS pointed out that R 40 and R 56 were designed to implement Article 5 PLT so that it was helpful to consider the intentions of the drafters of this latter provision, as to be found in the explanatory notes prepared by WIPO’s Standing Committee on the Law of Patents (SPC/1/4, Geneva, 5th session, 1998). There it was stated that the provisions concerning missing matter from the application would apply, in particular, where a sheet of the description or drawings is unintentionally omitted. The Board agrees but the cited situation is clearly not intended to be exhaustive as regards the application of R 56. The Board also disagrees with the RS’s conclusion from this statement that if an application “contains a set of (wrong) drawings, it is not absent of or lacking any drawings”, certainly to the extent that this was meant to be an exhaustive statement about the application of R 56 in this context. The RS also concluded that what the [applicant] was attempting to do was essentially to amend or correct the application under R 137 or R 139 respectively, something that is not permissible via R 56. The effect of the application of R 56 will in one sense always be to amend or correct the application but this is not the relevant issue. The issue is whether drawings referred to in the description were missing.

[11] This conclusion is also consistent with the existing case law of the Boards of Appeal. In J 27/10, the applicant’s case was that although the drawings originally filed were the correct drawings, the description as originally filed was the “wrong” one. The applicant’s request under R 56 to substitute it with the “right” description was refused on the basis that R 56 did not allow some, or all, of the description that was originally filed in order to obtain a filing dated to be amended, replaced or deleted: see point [12] of the reasons. The decision was thus concerned with whether “parts of the description … appear[ed] to be missing” within the meaning of R 56(1) and not with when drawings referred to in the description could properly be considered as missing. In J 15/12, citing J 27/10 but now in the context of missing drawings, it was again said that 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 be incorrect. The present decision does not bring these statements into doubt: the effect of the Board’s decision will not be to amend, replace or delete the drawings filed with the original application, since these drawings will remain part of the application.

[12] As to the second question, the evidence necessary to establish that the drawings which the applicant has filed under R 56(2) or (3) are in fact (the) missing drawings will depend on the circumstances.  

In the present case:

(a) It is apparent by simply reading and without the need for any technical knowledge that the drawings consisting of Figures 1 to 11 filed with the letter dated 30 June 2008, together with their named and numbered features, correspond to what is explained in the description, and vice versa.

(b) Further, the Board has compared these later-filed drawings with those in the US priority document. Both consist of identical Figures 1 to 11 with the identical reference numbers. Also the wording of each application, including the descriptions of the figures, is for all intents and purposes identical.

(c) These considerations established to the satisfaction of the Board that the drawings filed by the [applicant] with the letter dated 30 June 2008 were the drawings referred to in the description.

[13] As to the further requirements of R 56(3), the RS accepted that the US priority application could be used for the purposes of R 56 […]. Consequently, the further Japanese priority application need not be taken into consideration separately for the purpose of this appeal.

[14] As a result, the Board concludes that Figures 1 to 11 filed with the letter dated 30 June 2008 are to be treated as missing drawings under R 56(3) and (2). Consequently, pursuant to R 56(3) the date of filing remains 18 April 2008, 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 drawings. The drawings with Figures 1 to 11 filed with the letter dated 30 June 2008 must be added to the text of the application. Therefore, the EPO will also have to provide for a publication of the drawing sheets with Figures 1 to 11. […]

The case is remitted to the RS for further prosecution.

Certainly a very generous interpretation of R 56 ...

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