T 2573/11 – Limits Of The Three-Day-Rule

On July 5, 2011, the Examining Division (ED) posted a communication under R 71(3) EPC, informing the applicant that the main request on file did not comply with A 84 but that it intended to grant a patent on the basis of the first auxiliary request (with claim 9 amended by the ED).

On November 4, 2011, the applicant filed electronically a letter which reads as follows:

“In response to the Communication under R 71(3) dated 5 July 2011, we enclose French and German translations of the claims. Please deduct the due fees, including particularly the grant and printing fees, from our deposit account number ….

We look forward to receiving notification of the decision to grant.”

On November 11, 2011, at 15:33 hours, the applicant filed electronically a further letter in reply to the EPO communication under R 71(3) dated 5 July 2011, together with an amended set of claims 1 to 12 and French and German translations thereof. In this letter the applicant stated that the letter dated November 4, 2011, and the French and German translations attached thereto were withdrawn and under R 71(4) also requested voluntary amendments of the claims under R 137(3) and gave explanations regarding these amendments.

The letter further reads on page 1, fourth paragraph:

“Please deduct the due fees, including particularly the grant and printing fees, from our deposit account number …. The applicant approves the text for grant as amended.”

The decision to grant a European patent was posted on November 17, 2011.

The footer of this automatically created decision to grant reads: “EPO Form 2006A 12.07 (11/11/11)” and “to EPO postal service: 11/11/11” (emphasis added).

The footer of the attached “Note relating to the decision to grant a European patent” (EPO Form 2006R) reads: “EPA/EPO/OEB Form 2006R 12.07” and “08162496.7 (11.11.11) (emphasis added).

By a communication (EPO Form 2085) dated November 21, 2011, the applicant was informed that the request for amendment of November 11, 2011 had been received on November 11, 2011, but had reached the ED only after the decision to grant the European patent had been handed over to the EPO internal postal service and that, as the EPO was bound by its decision, the requested amendments could no longer be considered. Additionally, the applicant’s attention was drawn to the possibility of appeal against the decision to grant. The applicant availed itself of this possibility.

The applicant inter alia pointed out that, according to G 12/91, the date on which proceedings before the ED were completed was three working days before the date (November 17, 2011) stamped on the decision, i.e. in the present case November 14, 2011. The date on which proceedings before the ED were completed was after the date (November 11, 2011) on which the applicant requested amendments to be considered by the ED. Therefore the ED should have considered the requested amendments and the applicant had a legitimate expectation that they would be considered.

[2] The appellant argues that, pursuant to R 71(4) (and R 71(5), if necessary), the ED should have taken account of the amendments filed with the EPO at 15:33 hours on 11 November 2011, since at that point in time the ED had not yet completed the decision-making process following written proceedings. The essential question therefore is when exactly the proceedings before the decision-making department of first instance had been completed in the present case.

[3] In its decision G 12/91, the Enlarged Board of Appeal (EBA) decided that the decision-making process following written proceedings is completed on the date the decision to be notified is handed over to the EPO postal service by the decision-taking department’s formalities section (see Order and Headnote). The EBA based its decision on the fact that, when a decision is handed over by the formalities section to the EPO postal service for notification, it is taken from the file and is therefore removed from the power of the department that issued it, and that this moment marked the completion of proceedings before the decision-making department (G 12/91 [9.3]).It further held that once proceedings have been completed the decision-making department can no longer amend its decision but must disregard any fresh matter the parties may submit to the EPO thereafter (G 12/91 [9.3]). According to established jurisprudence this finding applies to decisions of opposition divisions (OD) and ED (see e.g. T 556/95, T 798/95, T 394/96 and T 355/03).

[4] It follows from the above that, for determining the completion of proceedings before the decision-making department, it has to be established when the decision was handed over by the formalities section to the EPO postal service for notification.

[5] The appellant submitted that, in accordance with established case law (G 12/91 [9.1]; T 556/95 [6]; T 394/96 [4]) as well as with established EPO practice, the date of termination of proceedings was three days prior to the date of actual despatch of the decision which was stamped in the box marked “Datum/Date” at the upper right-hand side of the decision, irrespective of the date appearing in the box marked “to EPO postal service” appearing in the footer of the decision.

[6] The board, however, is of the view that, if it is clearly indicated in the decision on which date the formalities section handed the decision over to the EPO postal service, this date is directly brought to the knowledge of the parties and is thus the date on which written proceedings before the decision-making department are completed. This conclusion is in line with the findings in decision G 12/91 for the following reasons.

[7] According to the facts underlying the referral decision in case G 12/91, it was not indicated in the decision of the first-instance department on which date the formalities section had handed over the decision to the EPO postal service (see G 12/91 [II]). At that time, this date was never indicated in the EPO decisions despatched to the parties or otherwise discernible for the parties. Only the date on which the decision was to be despatched was stamped on the decision.

[8] This conclusion is supported by several text passages of decision G 12/91:

- Point [VI] of the Summary of Facts and Submissions:

This section concerns the reply of the President of the EPO who had been asked by the EBA to outline EPO practice at that time with regard to decisions following written proceedings before the OD. According to the submissions of the President of the EPO, at that time only two dates were important with regard to the taking of a decision of an OD. The first date was the date on which the decision was signed by the members of the OD; this was indicated in the original copy of the decision (Form 2339), which was kept on file. This date was usually not communicated to the parties, unless a party questioned whether the composition of the OD was correct. The second date was the date on which the decision was to be despatched and which was entered in the decision notified to the parties. This date was of more importance to the parties because it indicated at what point in time the EPO had posted the decision, the point which under R 78(3) EPC 1973 was decisive for calculating time limits. To ensure that the date entered in the decision was indeed the date the decision was actually posted, decisions were systematically post-dated by three days. This practice was established by DG 2 Staff Notice 1/88-III dated 22 February 1988. If the decision could not be despatched on that date as intended, the EPO postal service returned it to the OD’s formalities officer for the date to be changed accordingly.

- points [9] and [9.1] of the Reasons which read:

“[9] This only leaves date 4.(c), the date on which the date-stamped, post-dated decision is handed over to the EPO postal service by the formalities section.

[9.1] At first sight, the fact that it is not directly brought to the knowledge of the parties would seem to militate against choosing this date. On the other hand it is a date the parties can ascertain very easily, because, as the President of the EPO explained, it is always three days prior to the date stamped. Internal EPO instructions make clear that a period of three days always elapses between the date-stamping of a decision and its despatch. If, for whatever reason, the EPO postal service is unable to despatch the decision on the date stamped, it returns the decision to the formalities section where it is given a new date, which again pre-dates the date of actual despatch by three days. This practice ensures that the date of despatch is always stamped on the decision three days before it is actually despatched. This date is therefore very easy to ascertain, both for the EPO and the parties. It thus fulfils the need for strict legal certainty which the handing down of a decision must ensure.” (emphasis added by the board)

- point [9.3] of the Reasons which reads:

“… Seeing that it is important for the parties to know at which point in time the decision-making process following written proceedings is completed, this point in time should be clearly indicated in the decision. The formalities section should also keep a register of the dates on which decisions are handed over to the EPO postal service to enable these dates to be ascertained at any time.” (emphasis added by the board)

[9] The EPO followed the first of the above recommendations of the EBA and added the following text to the decision forms of the first-instance departments: “to EPO postal service: …”. This text was added at least as from 7 February 1995, as can be seen from the first-instance decision underlying case T 556/95.

[10] In the present case, the wording of the footer of the decision to grant posted on 17 November 2011 reads “EPO Form 2006A 12.07 (11/11/11)” and “to EPO postal service: 11/11/11” (emphasis added by the board) and thus clearly indicates that this decision was handed over to the EPO postal service on Friday, 11 November 2011. That on this date the appealed decision was handed over to the EPO postal service is also clear from the footer of the “Note relating to the decision to grant a European patent (EPO Form 2006A) which reads: “08162496.7 (11.11.11)” (emphasis added by the board).

[11] On the basis of these facts and the board’s view given above (see in particular point [6] above), the board concludes that in the present case the decision-making process following written proceedings was completed on Friday, 11 November 2011.

[12] However, since the applicant filed electronically its letter containing a request under R 71(4) at 15:33 hours on Friday, 11 November 2011 […] and thus on the same date on which the decision was handed over to the EPO postal service, the question arises whether the chronological order of events on that date could lead to the conclusion that the decision-making process following written proceedings had not yet been completed in the present case when said letter was received by the EPO.

[13] The order of decision G 12/91 (loc. cit.) reads:

“The decision-making process following written proceedings is completed on the date the decision to be notified is handed over to the EPO postal service by the decision-taking department’s formalities section.” (emphasis added by the board)

According to this wording the smallest time unit is the date (German version: der Tag; French version: la date) as such and not an hour or the chronological order of events on a specific date. This would mean that the applicant’s request under R 71(4) should have been filed with the EPO at the latest one day before 11 November 2011, i.e. the date on which the decision-making process was completed, in order to be considered by the ED.

[14] But one could also argue in favour of the appellant that the chronological order of events on 11 November 2011 must be taken into account, in view of the finding of the EBA in point [9.3] of its decision G 12/91 which reads:

“When a decision is handed over by the formalities section to the EPO postal service for notification, it is taken from the file and is therefore removed from the power of the department that issued it. This moment marks the completion of proceedings before the decision-making department. Once proceedings have been completed the decision-making department can no longer amend its decision. It must disregard any fresh matter the parties may submit to the EPO thereafter.” (emphasis added by the board)

[15] However, even if the chronological order of events on 11 November 2011 were taken into account in the present case, the applicant’s letter was filed after the decision was handed over to the EPO internal postal service. According to the published official opening hours of the EPO’s Munich site, which are the only relevant opening hours because the ED in the present case was located in Munich, the applicant’s letter was filed after the end of the official working time and thus after the completion of the proceedings before the ED.

This is also confirmed by the communication (EPO Form 2085) dated 21 November 2011, informing the applicant that the request for amendment of 11 November 2011 was received on 11 November 2011, but reached the ED only after the decision to grant the European patent had been handed over to the EPO internal postal service.

[16] Since the applicant’s letter dated 11 November 2011 was filed after the completion of the proceedings before the ED, the ED was not competent to consider this letter even if, as submitted by the appellant, it contained a request under R 71(4) (see G 12/91 [9.3]; T 798/95 [6]; and T 355/03 [2]).

[17] It follows from the above that, in the present case, the fact that the applicant’s letter dated 11 November 2011 was not considered by the ED does not give rise to a fundamental deficiency in the first-instance proceedings within the meaning of Article 11 RPBA. Nor does it constitute a substantial procedural violation within the meaning of R 103(1)(a).

[18] In view of the above, the appeal must be dismissed and the appeal fee cannot be reimbursed.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

J 28/10 – The Doorman

In this case the applicant did not reply in due time to a communication pursuant to A 94(3).

A notification of loss of rights was issued on December 21, 2009.

This triggered a time limit for further processing:

21/12/09 + 10d (R 126(2)) = 31/12/09 + 2m (R 135(1); R 131(4)) = 28/2/10 (Sunday) →  1/3/10 (R 134(1))

The representative filed a request for further processing on March 3, 2010; the corresponding fee was paid and the response to the communication filed.

On March 22, the EPO informed the applicant that the request had not been filed in due time because the time limit had expired on March 1, 2010. As there was no response, the EPO issued a decision that the request for further processing was deemed not to have been filed, that the application was deemed to be withdrawn with effect from November 24, 2009, and that all fees paid after November 23, 2009 would be refunded once the decision became final.

The applicant filed an appeal and submitted that the communication of March 22 was never received by the office of the appellant’s representative who thus has never had the opportunity to reply to the communication.

The appellant’s representative gave further details as to the process in practice at his office concerning incoming mail as follows:

• The representative’s office was located in a large building in a business-park. Incoming mail for the law firm was not delivered to the office door of the law firm but left at the doorman’s desk located at the entrance of the building. For the case of certified letters, the postman provided a list of them to the doorman and, “depending on the practice of the day”, either the doorman signed said list confirming the reception, or a secretary of the firm fetched the mail from the doorman. In any case the representative’s office never got a copy of the list for cross-checking purposes.

• It could happen that the above process lead to letters being distributed to the wrong recipients. It could therefore not be excluded that a certified letter addressed to the representative’s law firm was received at the doorman’s desk, signed by him and then passed to the wrong recipient.

The Board dismissed the appeal:

[2] The issue raised by the appeal is that of the proof of reception of a communication from the EPO by an addressee with regard to the requirements specified in R 126 (2).

[3] In the present case the communication of the Formalities Officer acting on behalf of the Examining Division (ED) informing the appellant’s representative that the request for further processing has not been filed in due time bears the date of 22 March 2010. This communication was sent by registered letter. According to R 126(2) this communication is deemed to have been delivered to the addressee on the tenth day following its posting, unless the letter failed to reach the addressee or reached him at a later date. In the event of any dispute, it is incumbent on the EPO to establish that the letter reached its destination. In any case, the probative value of the evidence provided by the EPO should, if necessary, be balanced against the probative value of submissions and evidence by the appellant (applicant).

[3.1] As submitted by the appellant’s representative, a specific system for the reception of registered letters was implemented and accepted by the representative. This system involved the delivery of registered letters to the desk of the doorman of the business-park building in which the representative has his office.

The doorman is the employee of a security company, this company having a contractual relation with the company that administrates the business-park where the representative rents office space.

These letters are subsequently distributed either by the doorman or fetched by a secretary from the representative’s office.

[3.2] It results from the postal investigation carried out by the EPO before issuing the appealed decision that the communication of 22 March 2010 was delivered on 23 March 2010 and that the confirmation of receipt was signed by an identified recipient, i.e. Mr. Bodo T.

The same recipient is again mentioned on the advice of delivery of 8 July 2010 which concerns the notification of the appealed decision.

This leads to the conclusion that a letter which is delivered to Mr. T. should be deemed delivered by the postman to an authorized recipient, acting within the mail reception process implemented at the representative’s office and accepted by him.

[4] The processing of outgoing and incoming postal or electronic mail is a key point in the organization of a law office. It is a vital component of any office system that has to deal with time-limits that have legal consequences.

[4.1] It is an established fact that the appellant’s representative was fully aware of and accepted the system for the reception and distribution of postal mail in place at the business-park in which it rented office space.

The questions for consideration are, first, whether the above described system for the reception of postal mail is to be considered as a system falling under the organisational arrangements put in place, accepted and authorised by the representative, and second, whether this system enables the representative to know if mail has been received (see T 1535/10 [1.5.2]).

[4.2] It is not contested by the appellant’s representative that a third party, i.e. an employee of a security company hired by the park administration receives and accepts registered letters from the post administration on behalf of the representative’s law office, even without any explicit authorisation to that effect. By the course of conduct of renting office space subject to this system of postal receipt, the representative has implicitly consented to such an arrangement.

Furthermore, it was confirmed that no special procedures are in place with regard to the forwarding of these letters to an employee of the representative or to the representative himself. Apart from mere considerations of the distance of the representative’s office from the doorman’s desk, there was no specific hindrance preventing the representative or any of its employees from having knowledge of incoming postal mail.

It therefore has to be concluded that the representative was fully aware of the details and functioning of this system of reception and distribution of postal mail, including any risk associated with this system. By using a service external to his office for receiving and dispatching postal mail as explained above, the representative accepted that this external service would be treated as if it were his own in matters relating to the delivery of communications subject to deadlines.

[5] In the Board’s opinion the situation of the present case is different to the one dealt with in decisions J 9/05 and J 18/05. In these cases the only evidence provided by the ED was a letter from the Deutsche Post referring to the information received from the foreign postal service, according to which the letter was delivered to an authorised recipient, who, however, was not specified. Thus, there was no evidence that the registered letter was delivered to an authorized recipient and it was even not possible to determine to which recipient the letter was notified since the information retrieved from the postal services lacked detail and was extremely vague.

[6] It follows from the above that the communication of 22 March 2010 shall be deemed as delivered to the addressee on the tenth day following its posting (R 126(2)) without any response being given by the appellant’s representative in due time.

Hence, the Board judges that there is no reason to deviate from the decision under appeal. […]

The appeal is dismissed.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

J 10/11 – File In A Cupboard

In this decision the Legal Board dealt with a refusal of an Examining Division (ED) to refund a fee paid for further processing.

On April 14, 2008, the ED had issued a Communication pursuant to A 94(3) and invited the applicant to respond within a period of six months (i.e. on or before October 24, 2008). Because of an internal coding error, the ED issued a communication noting a loss of rights on September 25, 2008. Upon request of the applicant, the ED cancelled this communication.

On October 24, 2008, the appellant requested an extension of the six-month period by two months. This request was refused on November 5 on the ground that the request did not give sufficient reasons.

On November 28, 2008, a communication noting a loss of rights was issued.

The applicant requested further processing on December 3, 2008, as well as a refund of the corresponding fee. It expressed the opinion that the request should have been granted, in view of the special circumstances (first erroneous noting of loss of rights).

When the ED refused this refund, the applicant filed an appeal.

The Legal Board found the appeal to be inadmissible.

The legal framework

[2.1] One of the conditions of admissibility of the appeal is that the statement of grounds of appeal satisfies the provisions of A 108, third sentence, and R 99(2). Otherwise, the appeal must be rejected as inadmissible under R 101(1).

According to A 108, third sentence, “[w]ithin four months of notification of the decision, a statement setting out the grounds of appeal shall be filed in accordance with the Implementing Regulations.” Pursuant to R 99(2), “[i]n the statement of grounds of appeal the appellant shall indicate the reasons for setting aside the decision impugned, or the extent to which it is to be amended, and the facts and evidence on which the appeal is based.”

If the appellant submits that the decision under appeal is incorrect, then the statement setting out the grounds of appeal must enable the board to understand immediately why the decision is alleged to be incorrect and on what facts the appellant bases its arguments, without first having to make investigations of its own (cf. T 220/83 [4] and T 177/97 [1]; affirmed by numerous decisions, and in particular recently by T 573/09 [1.1]).

Whether the requirements of A 108, third sentence, in conjunction with R 99(2) are met has to be decided on the basis of the statement of grounds of appeal and of the reasons given in the contested decision (see, e.g., J 22/86 [2]; T 162/97 [1.1.2]).

Exceptionally, it has been acknowledged that “the requirement for admissibility [laid down in A 108, third sentence, EPC 1973] may be regarded as satisfied if it is immediately apparent upon reading the decision under appeal and the written statement [of grounds] that the decision should be set aside” (see J 22/86 [headnote I]).

The reasons given in the decision impugned

[2.2] In order to determine whether it is possible for the board to understand immediately why the decision by the ED rejecting a refund of the fee for further processing is alleged to be incorrect and should therefore be set aside, the board notes that the ED provided the following reasons for its confirmation of the refusal of the appellant’s request for extension of the six-month period:

(i) No reasons were given in that request why exceptionally an extension should be allowed.

(ii) The EPO’s unintentional erroneous first noting of loss of rights could not be regarded as exceptional circumstances justifying such extension. This is because the appellant had been afforded a period of six months for filing a response to the examination report. The appellant’s representative should have known that, in accordance with point 1.6 of Part E, Chapter VIII of the EPO Guidelines, sufficient grounds had to be given for a request for extension of time, acceptance of which would lead to a total period set exceeding six months.

The ED concluded from the above reasons that the request for reimbursement of the fee for further processing had to be rejected.

The content of the statement of grounds

Re reason (i)

[2.3.1] In the statement of grounds, the appellant did not allege that it had filed any reasons together with its request for extension according to which such extension should exceptionally be allowed.

Re reason (ii) above

[2.3.2] The ED […] found that “the unintentional mistake made by the EPO [i.e. the first noting of loss of rights having been issued in consequence of the erroneous coding of a four month time-limit ] … can not [sic] be regarded as exceptional circumstances” (making a reply in the six-month period impossible).

The appellant, in the brief statement of grounds comprising little more than one page, has not made it clear why this finding is allegedly incorrect.

In the fourth paragraph of the statement of grounds, referring to the above-quoted portion of the decision impugned, the appellant argued as follows: “This statement is clearly erroneous as most time limits are entered correctly into the EPO computer system”. The appellant thus asserted that there were exceptional circumstances being the erroneous coding of the six-month time limit as a four-month period that caused the first noting of loss of rights that was later cancelled. In this context the appellant also mentioned that it took a reminder to make the EPO act more than two years from its mistakes. Both facts ran counter to its legitimate expectations.

However, the appellant has made no submissions as to why those allegedly exceptional circumstances made it impossible for the appellant to file a timely reply, i.e. what was the causal relationship between the reasons given in the statement of grounds of appeal and the asserted invalidity of the findings of the decision impugned. Such submissions would have been necessary because a causal relationship is not obvious in the present case.

The ED’s communication of 14 April 2008 unambiguously invited the appellant to reply within a period of six months that expired on 24 October 2008, i.e. the date when the appellant filed its request for extension that included no reasons. It is not clear what impact the erroneous loss-of-rights communication by the EPO of 25 September 2008 according to which the time limit had expired two months earlier (than 24 October 2008) could have had on the appellant’s ability to reply within the six-month period. This is even less so as it had been the appellant itself that had spotted the error and informed the EPO thereof by its letter dated 10 October 2008, further to which the EPO, on 15 October 2008, cancelled the noting of loss of rights. In the letter of 10 October 2008 the appellant expressly referred to the “due date of October 24 next”.

An alleged or apparent relationship (connection) between the grounds of appeal and the findings of the decision impugned, however, would have been required. Otherwise the board is not in a position to understand immediately why the decision is alleged to be incorrect as required by the case law set out above […]. If no causal relationship in the above sense were required, then any submission, even if not having any connection with the reasons on which the decision impugned is based, would be acceptable. This would render the provisions of A 108, sentence 3, moot. It is true that, taking into account that the furnishing of a statement of grounds is a condition of the admissibility of the appeal and not of its being well-founded, the grounds do not have to be conclusive in themselves, i.e. justify the setting aside of the decision impugned. The grounds must however enable the board to assess whether or not the decision is incorrect.

Re reason related to the term “under the circumstances”

[2.3.3] For the first time in the oral proceedings (OPs) the appellant claimed that the portion of the grounds reading that the

Applicant and the undersigned [its representative] were in good faith under the impression that an extension of two months would be available under the circumstances (emphasis added)

explained why the decision under appeal was incorrect. The appellant argued that this portion expressed the legitimate expectation to the effect that any first extension of a time limit set for filing observations to a communication pursuant to A 94(3) would be granted. During years of practice a first extension of such time limit had always been granted, even in case of an initial time-limit of six months and notwithstanding the wording of the pertinent part of the EPO Guidelines.

However, the board is unable to attribute such a content to the text of the one sentence quoted above, which gives no specific indications as to the nature of the “circumstances” and immediately follows the paragraph referring to the erroneous initial coding of the time limit by the EPO. Nor can any indication to this effect be derived from the remainder of the statement of grounds, which nowhere refers to any constant EPO practice to grant a first extension of a six-month time limit in the absence of any reasons given to this end.

[2.4] Whether it is immediately apparent that the decision cannot be upheld

The board cannot discern that this is an exceptional case in the sense of the last paragraph of point [2.1] above. It is not immediately apparent upon reading the decision under appeal and the written statement of grounds that the decision should be set aside.

The erroneous loss-of-rights communication

[2.4.1] In the decision under appeal, the ED […] referred to the appellant’s letter of 3 December 2008 in which the appellant explained that there was not sufficient time to file a response due to a mistake made by the EPO, i.e. the noting of a loss of rights in error. In that one-page letter […] the appellant’s representative argued that he only received the EPO’s letter cancelling the (first) noting of loss of rights on 20 October 2008 and “needed more time than four days to handle this file” (emphasis added). The board is unable to understand this explanation. There is nothing on file suggesting that the representative was unaware at any point in time that he had a period of six months, and not four days, “to handle this file”.

On the contrary, as referred to […] above, in its response of 10 October 2008 to the erroneous loss-of-rights communication the appellant itself expressly referred to the “due date of 24 October next” and asked for cancellation of the communication. This makes it crystal clear that the appellant was aware of the six-month time limit and that the loss-of-rights communication had no impact on the appellant’s ability or inability to respond within the time limit set.

But even if the appellant’s explanations in this regard made subsequent to the statement of grounds of 15 July 2011 in its letter of 8 May 2012 could be taken into account, the board would still be unable to detect any respective serious mistake in the first-instance proceedings. In that letter the appellant’s representative argued that, under the standard work flow in a firm of patent attorneys, the patent attorney took up the file of an overseas applicant again as soon as the time limit for reply to a communication by the EPO approached. If no instructions were received from the applicant, the patent attorney drafted a reply for the applicant’s approval, if possible. Otherwise, the patent attorney requested further information from the applicant and an extension of time of two months from the EPO. As to the present case, the representative stated that it was only after the communication of 25 September 2008 noting a loss of rights (“After this had been redressed …” […]) had been cancelled with a letter of 15 October 2008 received on 20 October 2008 that he started studying the case (and concluded that further information was needed from the applicant).

However, as the board had said at point 5 in its communication annexed to the summons to OPs of 20 September 2012,

… it is the rationale of allowing a longer than four-month original time limit expressed in the Guidelines at point 1.2 that it must be “clear that in the circumstances a four-month time limit cannot be adhered to. … a six-month time limit might be justified if for example the subject-matter of the application … or the objections raised are exceptionally complicated.” This means that the representative is afforded two more months for dedicating time to working on the case and not for leaving the file in the cupboard and waiting until the time limit “approaches” to then contact the applicant if necessary. (Emphasis added)

With respect to the appellant’s request that the board withdraw the reasoning “under 5 of the preliminary opinion”, the board notes that there is no legal basis for a board of appeal to withdraw statements of fact or conclusions of law of the kind made provisionally under point 5 of the communication annexed to the summons. The above-quoted statement by the board, being the gist of point 5 of that communication, is a general one and cannot be considered as suggesting that in the case under appeal no contact between the representative and the applicant had taken place at earlier stages of the prosecution of the present application. The board repeats that the appellant had six months and not four days “to handle this file”. Hence the board could not detect any obvious serious mistake as far as the period allowed for the appellant to respond to the communication of 14 April 2008, on which the ED’s communications were based, is concerned.

Delay in issuing the decision impugned

[2.4.2] The appellant also relied on the fact that the EPO issued its decision only subsequent to a reminder after more than two years’ time. However, this cannot have any bearing on the question of whether the content of the decision was influenced by an obvious procedural mistake.

Conclusion

[2.5] In the light of the foregoing considerations, the board has arrived at the conclusion that the statement of grounds of appeal does not comply with the provisions of A 108 and R 99(2). It follows that the appeal must be rejected as inadmissible under A 101(1).

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 1849/12 – Bad News For Early Birds

The present case is somewhat unusual. It raises the question whether an applicant has the right to have its application granted before the expiry of the 18-months-period. The treatment of the admissibility of the appeal is also quite interesting.

The application under consideration was filed on July 21, 2011.

On May 7, 2012, the applicant’s representative had a telephone interview with the Examiner. The Examiner appears to have told the representative that in principle there was no obstacle to grant the patent but that he could not do so before having carried out a “topping-up” search in order to detect A 54(3) prior art, in conformity with the Guidelines (C-IV 7.1).

On June 28, 2012, the applicant’s representative repeated the request for an early grant. He pointed out that there was no legal basis in the EPC for refusing a request for an early grant. It was up to the applicant to bear the risk of there being undetected A 54(3) prior art. The representative also invoked a recent article by M. Wilming in epi Information 1/2011, p. 31. He requested an appealable decision and explained that in the absence of such a decision the applicant might file an appeal anyway.

On July 17, the ED sent a communication wherein it explained that the Guidelines were in line with the EPC and that there was no legal basis for an appealable decision.

The applicant then filed an appeal.

How did the Board react?

*** Translation of the German original (available here) ***

Competence and composition of the Board of appeal

[1.1] First it has to be examined to which Board of appeal the EPC refers the present case.

[1.2] The impugned communication deals both with the main request of the applicant to allow the patent to be granted as soon as possible, by immediately issuing a R 71(3) communication, and with the auxiliary request to issue an appealable decision in case the ED was not willing to grant the patent without delay […]. Thus the communication directly concerns the moment at which the ED decides to grant the European patent, i.e. the decision to grant (cf. G 8/95 [4-5]). Therefore, the Board is of the opinion that the impugned communication of the ED concerns the grant of a European patent within the meaning of A 21(3)(a) and that the Technical Board of appeal in its composition pursuant to A 21(3)(a) is competent to decide on the present appeal.

[1.3] In view of the particular nature of the case the Board in the above composition has considered it to be necessary to decide on the appeal in a composition pursuant to A 21(3)(b) (Article 9 RPBA).

Admissibility of the appeal

On the qualification of the impugned decision as a decision

[2.1.1] Pursuant to A 106(1) decisions of the departments referred to in this provision are appealable. In the present case, however, the appeal is not directed against a formal decision but against what the ED has referred to as “communication”. As the term “decision” is not defined in the EPC, the question arises whether the impugned communication, notwithstanding its designation, qualifies as an appealable decision. It has been established in the case law of the Boards of appeal that the answer to this question does not primarily depend on the form or the title of the document, but on its content, which has to be assessed in its procedural context. In particular, a document such as the impugned communication in the present case does qualify as a decision when it finally settles the relevant factual situation with respect to a party.

[2.1.2] In view of its contents, the appellant considers the communication of the ED dated July 17, 2012, to be an appealable decision because it satisfies all the features of an appealable decision cited in decision T 1181/04 [2.4] […].

The Board cannot endorse this point of view. At least two of the four criteria are not satisfied in the present case. The first instance novelty assessment expressly had not been terminated yet, in view of A 54(3) prior art, and thus the factual examination had not yet been terminated, so that the subsequent proceedings did not depend on the decision of the applicant alone.

Moreover, the factual situation of the case underlying decision T 1181/04 significantly differs from the present situation in that the ED already had issued a communication pursuant to A 51(4) EPC 1973 (nowadays, R 71(3)), which, under the circumstances of the case and for the reasons mentioned above qualified as a decision. In the present case, however, the ED had refused to (immediately) issue a communication pursuant to R 71(3). Therefore the question whether (and if so, which of) the cited criteria can be used for the assessment of the admissibility of the appeal, in terms of double relevant facts in civil proceedings, can be left unanswered.

[2.1.3] However, the Board shares the opinion of the appellant that its request for a R 71(3) communication being issued immediately has been dealt with conclusively in the impugned communication and has been refused in a final manner by the ED. This is because, within the framework of the examining proceedings, the ED has made a final and legally binding statement on the request of the appellant, which, as to its content, has the nature of a decision within the meaning of A 106(1).

As this decision has resulted in the refusal of the request of the appellant to have the patent and the rights under A 64 related to it granted soon, [the appellant] is also adversely affected.

Admission of the separate appeal

[2.2.1] Pursuant to A 106(2), a decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows a separate appeal.

The EPC does not contain an explicit provision [that allows to determine] in which cases a separate appeal against so-called interlocutory decisions has to be allowed.  Rather, the legislator has given the deciding department discretion to decide [on that matter], according to its duties (Travaux préparatoires to the EPC 1973, Report on the second session of the Coordination Committee, May 15-19, 1972, document BR/209/72, point 67).

It is undisputed that a first instance department which, in application of the EPC, has to take discretionary decisions has a margin of discretion which the Board of appeal has to respect. The Board may only should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles, or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion cf. G 7/93 [2.5-6]).

[2.2.2] The impugned communication of the ED, which is to be qualified as a decision, does not terminate the examination proceedings with respect to the appellant. The ED has expressly refused the auxiliary request of the appellant for an appealable decision and has justified this by referring to the lack of an appropriate legal basis.

When doing so, it apparently has not sufficiently taken account of the fact that the request of the appellant, to allow the patent to be granted soon, by immediately issuing a R 71(3) communication, could not have been granted in a meaningful way in case a successful appeal had been filed after the final decision on the grant. Thereby it has adversely affected [the appellant] by issuing its communication, in a way that cannot be remedied by means of an appeal after the final decision.

[2.2.3] Nor could the appellant avail itself of another legal remedy provided by the EPC against the impugned communication. Under these circumstances, the ED should have allowed a separate appeal because only an appeal could offer the appellant an opportunity to remedy the adverse effect within the framework of a judicial examination of the refusal of its request. This is all the more so because the EPC does not provide for an appeal against inaction of the EPO (cf. J 26/87).

[2.2.4] Thus the Board comes to the conclusion that the ED, when refusing the request that an appealable decision be issued has insufficiently taken account of an essential aspect and has exercised its discretion in an erroneous way. Therefore, the communication of the ED is to be considered to be separately appealable.

[2.3] As the appeal satisfies all the other requirements of A 106 to A 108 and R 97 and R 99, it is admissible.

Allowability of the appeal

[3.1] A 97(1) regulates the grant of a European patent as follows:

“If the ED is of the opinion that the EP application and the invention to which it relates meet the requirements of this Convention, it shall decide to grant a EP […].”

Thus the grant of a patent presupposes that the ED has reached the opinion that the requirements of the EPC are met. In the present case, however, the ED has expressed in the impugned communication dated July 17, 2012 (point 1) that it was not yet of the opinion that the application under consideration satisfied all the requirements of the EPC, including the requirement of novelty with respect to A 54(3) prior art. Thus it did not have the possibility and the right to proffer the possibility of a grant by issuing a communication under R 71(3). In contrast to the opinion of the appellant, the ED has no margin of discretion in this respect.

Whether the appellant renounces the novelty assessment with respect to A 54(3) prior art and is ready to bear the risk that may result from it, i.e. that the resulting patent is not legally valid, is irrelevant in this context, because this would mean that the applicant had the right to choose whether its application should be examined before grant – and if so, in regard of which requirements. However, there is no support for [this approach] in the EPC. Rather, the EPC provides for a mandatory examination with respect to all the requirements of the EPC before a patent can be granted. It is only when the ED is of the opinion that all requirements that are to be examined are fulfilled that it may arrange for a grant. In this context, it has to be noted that the EPO has to guarantee the interests of both the applicant and the public and that the public must be able to rely on the fact that it actually does. The fact that it often happens that prior art that has not been taken account of during examination proceedings, for various reasons, is cited in opposition proceedings does not alter this duty. The very fact that the opportunity to file an opposition against a granted patent is offered to any person emphasises the interest of the public that only valid rights be maintained and shows that the applicant cannot decide on the requirements of the EPC that are to be used in the examination of its application.

Moreover the requirement of novelty with respect to A 54(3) prior art is not of secondary importance, as the applicant appears to believe. Rather, the requirement of lack of novelty with respect to A 54(3) prior art constitutes both a ground for opposition pursuant to A 100(a) and a ground for revocation pursuant to A 138(1)(a).

[3.2] The argument of the appellant based on A 93(2), which expressly stipulates that the EP application shall be published at the same time as the specification of the EP when the decision to grant the patent becomes effective before the expiry of the 18-month period of eighteen months from the date of filing, cannot succeed either.

As a matter of fact, A 93(2) only regulates the possibility of granting a patent before the expiration of the 18 months. Even if the relevant Travaux préparatoires, the decision T 276/99 cited by the appellant or the Guidelines A-VI 1.1 are taken into account, this provision does not state that the applicant is entitled to having the patent granted at a time and under conditions of its choice. Therefore, the grant of a patent before the expiration of said period is not excluded, provided the ED has reached the conviction that the application satisfies all the requirements of the EPC. However, as this was not the case here, the possibility of granting a patent before the expiration of the 18-month period, which is mentioned in A 93(2), is out of the question. In this context the Board does not see any contradiction between the provisions of A 93(2) and A 97(1).

[3.3] Finally, the appellant points out that to a large extent the EPO was already aware of the unpublished prior rights pursuant to A 54(3) before the 18-month period had expired. As far as PCT applications were concerned, 18 months after their filing or priority date, respectively, it was not established whether they would enter into the European phase within 31 month after their filing or priority date, respectively, and, therefore, become prior art at all. It was only at that later date that a translation was available, without which the contents of PCT applications of e.g. Japanese or Chinese origin – and, as a consequence, their relevance for the novelty assessment – could not be determined.

The Board cannot endorse this point of view.  According to A 153(5), in connection with R 165, international applications filed under the PCT constitute potential A 54(3) prior art. If the EPO is not in charge of their treatment during the international phase, then they are only available to the Office after their publication, because the EPO acting as Designated Office does not make use of the possibility of systematic early transmission under Article 13(1) PCT. Thus it is only 18 months after the filing or priority date, respectively, that the ED can have a complete picture of potential prior rights. If under these circumstances it reaches the conviction that the subject-matter of the claims to be examined is novel, then it may issue a R 71(3) communication, without there being any need to wait for a complete translation or an effective entry of the prior international applications into the European phase. To this extent the practice of the EPO not to proffer the possibility of a grant earlier than 18 months after the filing or priority date, respectively is quite understandable under said circumstances.

[4] Moreover, the Board wishes to point out that according to A 99(1) the nine-month time limit for filing an opposition is triggered by the publication of the mention of the grant of the EP in the EP Bulletin. If this moment was situated well before the end of the 18-month period pursuant to A 93(1), then the prior art pursuant to A 54(3) that is relevant for the granted patent would not be completely available to the public at the time of grant. Potentially novelty-destructive prior art would only emerge during the time limit for filing an opposition although it might be relevant in view of the ground for opposition pursuant to A 100(a). This would significantly complicate the assessment of the validity of the patent by third parties, and, consequently, their decision whether an opposition should be filed. In the worst case scenario the time limit for filing an appeal could expire before all A 54(3) prior rights were publicly available, which would constitute a considerable systematic disadvantage and would run counter to the intentions of the legislator regarding opposition proceedings, which have been mentioned under point [3.1]. […]

The appeal is dismissed.

NB: The Board has also prepared take-away headnotes:

When the ED refuses a request that is limited in time (zeitlich gebunden) then it has to allow for a separate appeal if this is the only way to remedy any adverse effect (see point [2.2]).

The decision whether the requirements of the EPC are fulfilled and whether the patent may be granted lies exclusively with the competent ED (see point [3.1]).

I find this decision quite stimulating. I personally agree with the legal conclusions of the Board, but I also find the applicant's criticism of the Guidelines to be justified: for some mysterious reason, A 93(2) appears to envisage the possibility of a grant before the 18-month time limit, whereas the Guidelines seem to prohibit it. This has a slight ultra vires flavour.

Should you wish to download the whole decision (in German) or have a look at the file wrapper, just click here.

J 6/12 – What Goes Up Must Come Down

The applicant filed an appeal against the decision of the Examining Division (ED) not to reimburse ten claims fees.

On July 21, 2008, the ED issued a R 71(3) communication for the ECT application. As the version on which this communication was based contained 36 claims, the applicant was invited to pay claims fees for 21 claims.

On December 1, 2008, the applicant filed an amended set of claims containing 26 claims.

On December 16, 2008, the applicant was informed that the EPO had debited another 2000 euros (claims fees for the ten excess claims) from its account.

On January 7, 2009, the ED informed the applicant that it accepted the amendments.

The decision to grant was taken on January 21, 2009, based on the amended claims.

On January 27, 2009, the applicant was told that the claims fees had fallen due when the communication pursuant to R 71(3) was delivered; a subsequent reduction of the number of claims did not reduce the number of claims fees to be paid.

The applicant replied that as an increase of the number of claims required the payment of more claims fees, the reduction of their number had to have the converse effect.

The Office maintained its opinion and referred to the Guidelines, A XI-5.2.3.

In its response the applicant argued that R 71(6) (in its then applicable version) did not refer to R 71(3) but referred to “the text intended for grant”. A reduction of the number of claims, therefore, had to entail a fee reduction. The form concerning the “amendment or correction of the Druckexemplar” also supported this understanding.

The formalities agent of the ED was not persuaded. A communication dated November 13, 2009, contained the following statement (in English translation):

“… At the grant stage the fees to be paid for further claims are calculated on the basis of the application in the text intended for grant. This refers in particular to the text proposed in the communication pursuant to R 71(3) if the latter contains further claims for which no fee had been paid. Amendments filed in response to this communication or corrections leading to a higher number of claims are also taken into account in application of amended R 71(6). However, a reduction of the number of claims at this stage has no effect on the claims fees to be paid.”

The ED also argued that this understanding was supported by the use of “and” instead of “or” in R 71(6) in its then applicable version:

“(6) If the European patent application in the text intended for grant comprises more than fifteen claims, the ED shall invite the applicant to pay claims fees in respect of each additional claim within the period under paragraph 3, and, where applicable, paragraph 5, unless the said fees have already been paid under R 45 or R 162.”

The “and” showed “that the issuing of the R 71(3) communication was the decisive moment for fixing the fees to be paid at the grant stage and that there was no new calculation of claims fees when subsequent amendments or corrections led to a reduction of the number of claims.”

According to the ED, the claims fees were intended to compensate for the additional work generated by the great number of claims. As the claims on file at the R 71(3) stage or filed under R 71(5) had been the object of examination, the payment of the fees at that stage was justified.

R 71(1) did not distinguish between the stages under R 71(3) and 71(5) either; if the claims fees were not paid, the application was deemed to be withdrawn.

Moreover, there was no provision in the EPC in application of which the claims fees had to be reimbursed after the number of claims had been reduced after receipt of the R 71(3) communication.

The applicant filed a response in which it objected to the arguments of the ED.

An appealable decision was issued on November 10, 2011.

The applicant filed an appeal.

Here is the verdict of the Board:

*** Translation of the German original ***

[2] The appellant does not contest that R 71(6), which is applicable in the version that entered into force together with the revised EPC in December 2007, constitutes the legal basis for the invitation to pay claims fees. The EPC 1973 already contained an almost identical provision: R 51(7). The changes introduced with the version of R 71 which entered into force together with the revised EPC that are relevant for the present case concern the introduction, into R 71(6), of the legal basis for the invitation to pay additional claims fees when new claims are filed in response to a communication pursuant to R 71(5) (Special edition n° 5, OJ EPO 2007, 122).

[3] According to the wording of this provision it is the “text intended for grant” that constitutes the basis for charging additional claims fees. The same expression is also used in paragraph 3 of this rule for defining the content of the communication concerning the ED’s intention to grant.

[4] Therefore, the question arises whether this expression has the same content in both paragraphs, so that – as argued in the impugned decision – the “text intended for grant” is fixed (steht fest) when the communication pursuant to R 71(3) is drafted.

[5] R 71(3) deals with the stage where the ED has terminated the examination of the European patent application; it defines the necessary steps that have to be taken before the grant can be decided and becomes legally effective. The list contains the communication of the “text in which [the ED] intends to grant it” and the invitation to pay the fee for grant and publishing as well as to file a translation of the claims in the two official languages of the EPO other than the language of the proceedings.

From this point in time on, two scenarios are possible:

(a) the applicant approves the proposed version and fulfils all the requirements of R 71(3), or

(b) it requests amendments under R 71(4).

In case (a) the proposed version, which the applicant has approved, defines the content of the decision to grant. As a consequence, it also constitutes the “text intended for grant”, so that, if it contains more than 15 claims, claims fees fall due and have to be paid in application of R 71(6).

In case (b), however, the ED has to deal with the filed amendments and may have to establish a new communication (Prüfungsbescheid) (R 71(5)). Thus the “text intended for grant” will only be fixed (feststehen) after the ED has approved the amendments or the applicant has approved the further/new propositions of the ED, respectively. Only then is it possible to establish how many claims the “text intended for grant” actually contains in order to determine the corresponding amount of claims fees to be paid. This is what happened in the present case in the communication of January 7, 2009, in which the applicant was informed that the “request for amendment … pursuant to R 71(4) dated December 1, 2008” had been granted.

[6] In this context it should be noted that R 71(6) only explicitly refers to R 71(3) in view of the period in which the fees are to be paid. As there is no referral whatsoever concerning the “text intended for grant”, and in view of the general formulation [the Board] can only note that the wording of the provision as such does not justify the conclusion that the “text intended for grant” is always the text which was communicated to the applicant under R 71(3). As explained above under point [5], the proceedings can evolve in different directions.

[7] This conclusion is supported by the practice described in the impugned decision. If it always was the version fixed by the communication pursuant to R 71(3) that defined the “text intended for grant”, then the ED could not really ask for the payment of additional fees if the amendments introduced under R 71(4) or (5) led to a higher number of claims. However, that is not the practice described in the impugned decision. Thus [the ED] indirectly admits that the “text intended for grant” can also be fixed at a later stage. Therefore, the opinion expressed in the impugned decision is not coherent. According to this opinion, more fees are due when the number of claims increases but reimbursement is refused when their number decreases. 

[8] It follows from these considerations that the arguments of the ED do not resist scrutiny and that it cannot justify its negative decision.

[9] The next argument cited in the impugned decision defines the claims fees to be a compensation for the examination work caused by the greater number of claims.

[10] Claims fees were introduced by the legislator in order to keep the number of claims within reasonable limits. In its decision J 9/84 [4] the Legal Board of appeal explained that the main purpose of R 31 EPC [1973] was “to induce the applicant to limit the protection sought to a certain number of claims, in the first instance for the purposes of the European search”. The Board found itself unable to endorse the opinion that the fees were a financial compensation to the EPO in respect of extra work (in the substantial examination) caused by the number of claims (cf. Teschemacher, A 84, patent claims, in: Münchner Gemeinschaftskommentar, 7^th delivery, 1985, marginal number 132 ff.: “Moreover the fees constitute a certain equivalent for the additional administrative effort related to the examination of applications containing a greater number of claims.”, see also T 937/09).

[11] This approach is also supported by the original structure of the system, where it was foreseen that in case of a lack of approval to the text intended for grant, the communication pursuant to R 51(4) was deemed not to have been issued and the examination was continued (R 51 EPC 1973 in its version in force until 1987). Also, in its version in force as of September 1, 1987, R 51 EPC 1973 provided that [the EPO] should invite [the applicant] to pay all fees only after any proposed amendment had been considered (R 51(6) and (7) in its version in force as of September 1, 1987).

[12] The consequence of this is that if it had been the intention [of the legislator] to compensate for the increased examination work at all, this compensation would depend on the claims that were on file already at the beginning of the proceedings. This is also in line with the overall concept of the fee structure according to the EPC according to which in principle fees have to be paid in advance, in view of the requested service. If the legislative purpose behind the claims fees was to cover the extra examination work, then the payment of these fees would have been provided in the course of the examination proceedings and triggered by the filing of the claims, before they were examined by the ED.

[13] The amendment of R 51 EPC 1973 that entered into force on July 1, 2002, mainly served the purpose of accelerating this last stage of the proceedings and the possibility of granting the patent directly. The express provision contained in the amended rule according to which the fees for grant and publishing as well as any claims fees paid have to be refunded if the patent is not granted, is due to the merger of two procedural steps into one. As a matter of fact, in the system in force after the amendment the applicant had to fulfil all the requirements that had to be fulfilled in two steps before within one single time limit that could not be extended. However, the amendment has not changed the core requirement according to which there has to be a text approved by the applicant in order for a patent to be granted. If the applicant files amendments leading to a reduced number of claims in response to the communication pursuant to R 71(3), then these claims form the basis for calculating the claims fees to be paid, just as they form the basis for the grant of the European patent.

[14] As to the version of the provision that has entered into force together with the revised EPC, which is to be applied in the present case, the only explanation provided for the changes is that “if in response to a communication under R 51(5) EPC 1973, new claims were submitted and their number exceeded the number previously on file, a legal basis for requesting additional claims fees was missing in the EPC 1973. R 71(6) EPC 2000 now provides a legal basis (Special edition n° 5, OJ EPO 2007, 122; emphasis by the Board).

These explanations do not concern the above considerations (point [13]). On the one hand there is nothing on increased examination expenses and their financial compensation; on the other hand the express wording stipulates that the number of claims filed under R 71(5) is to be compared with the original number of claims in order to determine whether the invitation to pay additional claims fees is justified. The conclusion that in proceedings under R 71(5) the amended claims determine the amount of the claims fees is, therefore, inevitable.

[15] Finally the argument according to which there is no provision on which to base the requested reimbursement does not lead to a different outcome. It is indeed generally acknowledged that an express legal basis is needed not only for invitations to pay fees but also for reimbursing them. However, this only holds true if there has been a cause in law (Rechtsgrund) for the fee payment, i.e. if the fees had fallen due. In the present case, however, according to the wording of R 71(6) the [EPO] may invite [the applicant] to pay claims fees only on the basis of the “text intended for grant”. However, as explained above, this text is not fixed yet when the communication pursuant to R 71(3) is drafted, but only once the ED has approved the filed amendments. Fees the [applicant] has been invited to pay at that earlier stage have not yet fallen due to the extent to which the applicant has reduced the number of claims in response to the communication pursuant to R 71(3). The EPO may not keep fees that have been paid without there being a cause in law, and which are not to be considered to be negligible amounts (Bagatellbeträge).

[16] For the above reasons the impugned decision cannot be maintained. It has to be set aside and the controversial claims fees have to be reimbursed. […]

The reimbursement of ten claims fees is ordered.

NB: The Board has provided a handy headnote:

If amendments under R 71(4) are requested, the “text intended for grant” is only fixed once the ED has approved the amendments or the applicant has approved further/new propositions by the ED, respectively. It is only then that the [EPO] can determine the number of claims which the “text intended for grant” contains and, consequently, the number of claims fees that fall due.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.