5.4.1 Legal provisions

If the examination under Art. 90 EPC to determine whether the application satisfies the requirements for the accordance of a date of filing reveals that parts of the description, or drawings, appear to be missing, the EPO invites the applicant to file the missing parts within two months (R. 56(1) EPC). The rule's counterpart under the EPC 1973, R. 43 EPC 1973 referred only to missing drawings. The reference to missing parts of the description was added in the EPC 2000. Thus, in J 7/97, under the EPC 1973, where a European patent application had been filed with the EPO by fax, but one page of the description was missing, this was not considered an 'obvious error' and a filing date was granted for the application but omitting the page which was not faxed.

Where the applicant files missing parts of the description or missing drawings within two months of the date of filing or of a communication by the EPO inviting him to file the missing parts, the application is re-dated to the date on which the missing parts were filed. However, if the application claims priority, the missing parts of the description or the missing drawings are completely contained in the earlier application and all the requirements of R. 56(3) EPC are fulfilled, the application is not re-dated but retains the date on which the requirements laid down in R. 40(1) EPC were fulfilled (R. 56(3) EPC).

R. 56 EPC applies only to applications filed after the entry into force of EPC 2000 (J 3/06, OJ 2009, 170). According to the Legal Board, applications filed before 13 December 2007 can be seen to be subject to EPC 2000 as regards the applicability of the Implementing Regulations when the article corresponding to the rule in question also applies to patent applications filed prior to 13 December 2007 under Article 1 of the Administrative Council's decision of 28 June 2001. However, a rule in the Implementing Regulations can be assumed to apply to a particular EPC 2000 article when it puts a more detailed construction on that article, in keeping with the purpose of "implementing" the EPC. This is not true of the relationship between Art. 90 and R. 56 EPC because R. 56 EPC does not elucidate Art. 90 EPC. In the context of the system as a whole, R. 56 EPC relates to Art. 80 EPC (filing date), which is not in the catalogue of provisions stated to be also applicable to pending procedures as soon as EPC 2000 was to enter into force. Consequently, the rules relating to it do not apply either.

In T 2166/10 the patent proprietor filed an appeal against the decision of the opposition division revoking his patent, which had been granted on the basis of a Euro-PCT application. Some of the pages of the description had been missing from the original application and the opposition division held that only the originally filed pages were entitled to the international filing date. The subject-matter as granted consequently extended beyond the content of the application as filed.

In the board's judgment, there was no doubt that the preliminary examination and the patent in suit were partly based on new description pages which had been submitted in the course of the international preliminary examination procedure by way of amendment and which were missing from the application as originally filed. The applicant had never raised the issue of the missing pages or requested a correction of the filing date (cf. J 3/00). Nor did the applicant subsequently file a request for correction of an error in the decision to grant. The board therefore concluded that the opposition division was correct when it held that the application as filed therefore did not include the missing pages of the description.

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