3.2.2 Clear and unambiguous approval of the text

A number of decisions commented on below relate to earlier versions of former R. 51(4) EPC 1973 (now R. 71(3) EPC, version 2012). Nevertheless, they may also be applicable to the new R. 71(3) EPC.

In J 12/83 (OJ 1985, 6) the board held that an applicant for a European patent could be "adversely affected", within the meaning of Art. 107 EPC 1973, by a decision to grant the patent if the patent were granted with a text not approved by the applicant, contrary to Art. 97(2)(a) EPC 1973. Approval, for the purposes of that Article, had to be established "in accordance with the provisions of the Implementing Regulations" (here R. 51(4) EPC 1973).

In J 13/94 the board observed that any approval of the text, in accordance with R. 51(4) EPC 1973, might thus have serious procedural consequences for applicants. Hence, according to the case law of the Legal Board of Appeal, declarations by applicants should only be treated as valid approval under R. 51(4) EPC 1973 if they were clear and unambiguous which, in particular, implied that:

the approval was not subject to any condition (J 27/94, OJ 1995, 831);

it was clear to which text the applicant had given his approval (J 29/95, OJ 1996, 489).

In J 27/94 (OJ 1995, 831) the board held that in the interests of legal certainty a procedural declaration had to be unambiguous (confirming J 11/94, OJ 1995, 596). This implied that it must not be subject to any condition, leaving it open whether the EPO could proceed further on the basis thereof. It found that the examining division should not have treated the letter in question as valid approval under R. 51(4) EPC 1973, because it contained a condition which made the approval invalid. The approval of the text intended for grant was a necessary requirement for the next step in the proceedings, i.e. the communication under R. 51(6) EPC 1973. It had to be clear for the EPO when receiving the declaration whether or not it was an appropriate basis for the despatch of this communication. In the interests of legal certainty the board stated that procedural declarations had to be unambiguous. The examining division should have objected to the invalid approval, with the eventual consequence foreseen in R. 51(5), first sentence, EPC 1973.

In T 971/06 the board noted that the approval by an applicant or patent proprietor under Art. 97(2)(a) EPC 1973 was a principle underlying all decisions of the EPO (see Art. 113(2) EPC 1973). Accordingly, it was perfectly clear that it was an absolute pre-condition of any decision of the examining division to grant a patent that an applicant had to have consented to the proposed text. If that pre-condition were not fulfilled, the only courses of action open to the examining division were to refuse the application under Art. 97(1) EPC 1973 or, if possible amendments or corrections remain to be considered, to continue the examination. So strict was the approval condition that, as the case law showed, the only valid approval was that which was unconditional, unambiguous and clear (see J 13/94 of 4 October 1996; J 27/94, OJ 1995, 831; and J 29/95, OJ 1996, 489). The board held that in the absence of a valid approval, the examining division had no power to make a decision to grant and any decision to grant purportedly made without the applicant's valid approval could have no legal effect. Any such purported decision was therefore a nullity.

In T 872/90 the board held that, in view of the requirement of Art. 113(2) EPC 1973 according to which the EPO would consider and decide on the European application only in the text submitted to it, or agreed, by the appellant, former claims which had been replaced by newly filed claims could no longer be considered to constitute a text agreed to by the applicant.

In T 1/92 (OJ 1993, 685) the board held that the applicant’s approval of the text is only binding if it is still unambiguously present at the expiry of the R. 51(4) EPC 1973 period.

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