Zusammenfassung von EPC2000 R 071(5) für die Entscheidung T1823/23 vom 08.01.2024

In T 1823/23 the appellant (applicant) filed an appeal against the decision of the examining division to grant the patent in the version indicated in the communication under R. 71(3) EPC of 21 February 2023. The appellant requested that the patent be granted on the basis of the documents identified in its letter of 31 January 2023 and the reimbursement of the appeal fee. The application as filed included three drawing sheets including figures 1 to 6. The drawing sheets were always properly listed in the request for entry into the European phase and in the communications from the examining division. They were also included in the documents submitted by the applicant on 31 January 2023 as the basis for a communication under R. 71(3) EPC. The communication under R. 71(3) EPC of 21 February 2023, however, did not contain any drawings, nor was there, according to the board, any hint that any deletion or amendment had been made by the examining division to the drawing sheets. There was thus a clear discrepancy between the description referring to the figures and the absence of any drawing sheets in the text intended for grant, which should have been remarked upon by the examining division when allegedly deleting the drawing sheets. It appeared to the board that neither the members of the examining division nor the appellant had realised that the drawing sheets were missing and that the documents referred to in the communication pursuant to R. 71(3) EPC did not correspond to those according to the appellant's request. The appellant had filed a translation of the claims in the two other official languages and paid the fee for grant and publication. In view of the file history and taking into account the EPO practice regarding amendments proposed by the examining division, the board concluded that the examining division had not indicated in the communication according to R. 71(3) EPC the text it had intended to grant. Following T 2081/16, T 408/21 and T 1003/19, the board held that R. 71(5) EPC did not apply, as in the step preceding the deemed approval the applicant had to be informed of the text in which the examining division intended to grant the patent according to R. 71(3) EPC. Although the applicant had received a R. 71(3) EPC communication, the documents indicated were not those which the examining division intended to grant. The board was aware of decision T 265/20, in which the competent board did not follow the approach in decisions T 2081/16, T 408/21 and T 1003/19. The present case was however distinguished from T 265/20 not least in that the board could identify convincing reasons why the examining division's true intention was not reflected by the text of the R. 71(3) EPC communication. As all other requirements pursuant to R. 101(1) EPC had been met, the board concluded that the appeal was admissible. It held that a decision to grant pursuant to Art. 97(1) EPC based on an application in a text which was neither submitted nor agreed to by the appellant, as was the case here, did not comply with Art. 113(2) EPC. The decision under appeal was therefore set aside. According to the board, the reimbursement of the appeal fee was not equitable because the applicant had made no use of opportunities to participate in the initial proceedings. The error made by the examining division had already been inserted into the communication under R. 71(3) EPC, and the applicant could and should have noticed it when checking the text of this communication. The fact that no published drawing sheets existed should have alerted it and prompted a double check. The request for reimbursement of the appeal fee was therefore rejected.