Zusammenfassung von Rule 071(3) EPC für die Entscheidung T1224/24 vom 25.02.2025

In T 1224/24 the appeal was directed against the decision of the examining division to grant a European patent on the basis of the application documents indicated in the communication under R. 71(3) EPC dated 13 December 2023. This communication had not indicated that the text intended for grant differed from the applicant's request regarding the drawings. Furthermore, no prior communication from the examining division had proposed amendments to the drawings filed by the applicant, or contained any comments on them. All communications had stated that, for the figures, the examination was carried out on the amended drawing sheets 1/4-4/4 as filed upon entry into the regional phase before the EPO. However, the file contained no explicit approval from the applicant for the removal of the remaining 48 originally filed drawings. It appeared that neither the members of the examining division nor the appellant had realised that several of the original drawing sheets were omitted and only the amended drawing sheets 3/52, 28/52, 37/52 – renumbered 1/4-4/4 – were considered by the examining division. In accordance with T 1003/19, T 1823/23 and T 2081/16, the board held that the legal consequence set out in R. 71(5) EPC could only apply if the communication under R. 71(3) EPC reflected the examining division's intention regarding the application documents on which the patent was to be granted. This conclusion was drawn from the unambiguous wording of R. 71(3) EPC, which uses the verb "intends", clearly indicating the intention of the examining division. Deemed approval under R. 71(5) EPC could only occur after a text compliant with R. 71(3) EPC had been communicated to the applicant. R. 71(5) EPC is not a stand-alone provision. Simply paying the fee and filing translations does not trigger deemed approval regardless of the communicated text's content. The text must conform to R. 71(3) EPC, to which R. 71(5) EPC refers, and align with the examining division's intention regarding the application documents that form the basis for granting the patent. Otherwise, the subsequent fee payment and translation filing remain ineffective. The board further stated that R. 71(6) EPC allows the applicant to request reasoned amendments or corrections to the communicated text. However, this provision applies only to texts communicated in accordance with R. 71(3) EPC, which reflect the examining division's intention regarding the application documents that form the basis for granting the patent. This specifically addresses situations where the communication refers to the correct documents intended for grant, but these documents contain clerical mistakes or inaccuracies that the applicant wishes to rectify, or the applicant is not satisfied with the amendments explicitly proposed by the examining division to the text they submitted. However, if the communicated text does not reflect the examining division's intention for granting the patent, neither the absence of a correction or amendment request under R. 71(6) EPC, nor the payment of the fee and filing of translations under R. 71(5) EPC will have any legal consequence. The board found that this conclusion did not only align with the clear wording of R. 71(3) EPC, but also safeguarded the applicant from being seriously prejudiced by the impossibility to request corrections under R. 140 EPC (see G 1/10). The decision under appeal was based on a text that had neither been submitted nor had been agreed upon by the applicant. Therefore, the decision did not comply with Art. 113(2) EPC and the board set it aside. The board was aware of T 265/20, where the board in charge did not follow the approach taken in T 1003/19 and T 2081/16 and ultimately dismissed the appeal. However, according to the present board, T 265/20 did not represent diverging case law, as the circumstances in that case were different. The request for reimbursement of the appeal fee had been withdrawn by the appellant. The board on its own did not consider reimbursement equitable, despite the substantial procedural violation affecting the decision under appeal (R. 103(1)(a) EPC). The board pointed out that the applicant had had several opportunities during the examination proceedings to identify the error regarding the drawing sheets.