1.1.1
Missing drawings or parts of the description filed under Rule 56

Where the applicant has supplied missing drawings or parts of the description after accordance of a filing date (see A‑II, 5) under Rule 56, and the Receiving Section has determined that the missing drawings or parts of the description are "completely contained" in the claimed priority application, the application is not re-dated to the date on which the missing drawings or parts of the description were supplied.

The examining division may review the findings of the Receiving Section on the applicability of Rule 56(3), unless there has been a decision of the board of appeal.

Normally the review of the findings will have been initiated at the search stage (see B‑III, 3.3.1, and B‑XI, 2.1). However, it can still be done for the first time during substantive examination.

For the criteria for determining whether the "completely contained" requirement of Rule 56(3) is satisfied, see A‑II, 5.4.2.

Should the examining division come to the conclusion that the missing elements are not "completely contained" in the priority document, contrary to the original finding of the Receiving Section, it will raise an objection under Rule 56 in the first communication under Art. 94(3), presenting detailed arguments as to why the "completely contained" requirement is not satisfied. The communication will contain a warning of the possible consequence of re-dating because of non-compliance with the requirements of Rule 56(3) and, if re-dating would result in the filing date being more than 12 months after the claimed priority date, also a warning of the resultant loss of priority right.

Note that if the review was initiated at the search stage and an objection under Rule 56 was raised in the EESR, the applicant may already have submitted a response to the search opinion (required by Rule 70a or filed voluntarily in response to a search opinion not requiring a response). The examining division will treat this response in the same manner as the reply to the first communication.

If the applicant replies by withdrawing the missing parts, the examination will be continued as normal with the original filing date, but without the missing parts (see also F‑III, 10).

If the applicant replies by arguing convincingly that the "completely contained" requirement is satisfied, the examination will be continued as normal with the missing parts and with the original filing date.

If the applicant maintains the missing parts and his arguments are not convincing, the examining division will issue a further communication under Art. 94(3) informing him of the impending re-dating of the application to the date on which the missing parts were received at the EPO. This communication gives the applicant a further opportunity to withdraw the subsequently filed missing parts within a time limit of two months (Rule 132(2)) so as to restore the original filing date or to request an appealable decision on the re-dating. It indicates the reasons why the "completely contained" requirement is not met, and also deals with any counter-arguments presented by the applicant.

If the applicant does not reply in due time to the communication informing him of the impending re-dating of the application, the application is deemed to be withdrawn (Art. 94(4)).

If the applicant opts to withdraw the subsequently filed missing parts, the re-dating of the application will be deemed not to have been made (see also B‑XI, 2.1). The examiner will continue the examination procedure as normal with the original filing date, but without the missing parts (see also F‑III, 10).

If the applicant does not agree with the finding, he may (within two months (Rule 132(2)) request an appealable decision on the matter. In this case, the examining division will issue a reasoned decision, informing the applicant of the new date of filing, of the reasons for the re-dating and (where appropriate) of the detrimental effect of the re-dating on the claimed priority right. This decision will allow a separate appeal according to Art. 106(2).

Once the period for filing an appeal has expired without an appeal being filed, the examiner will resume examination on the basis of the new date of filing. Note that the EESR may contain documents which could become relevant as a result of the re-dating.

If the applicant files an appeal in due time, competence for the file passes to the board of appeal for reviewing the decision on the accordance of a filing date. While the case is pending before the board of appeal, the examining division will not continue substantive examination. Once the board of appeal has issued a decision, the file will be returned to the examiner, who will be bound on this point by the decision of the Board (Art. 111(2)). He will then resume examination on the basis of the filing date fixed by the Board.

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