L. Berichtigung von Fehlern in Entscheidungen

In case T 0387/25 the patent proprietors had appealed the examining division's decision to grant a patent because the drawings had been omitted in the supporting documents indicated in the communication pursuant to R. 71(3) EPC.

The board noted that in the present case the drawings clearly formed part of the application as originally filed, and also of the application documents on which the European regional phase was to be based. The appellants explicitly maintained the "drawings as presently on file" in their submissions during examination proceedings when filing amended claims. They never agreed to the omission of the drawings, and in particular did not expressly agree to the text intended for grant in the communication pursuant to R. 71(3) EPC. This distinguishes the present case from the situations underlying T 2277/19 and T 2864/18.

Following decisions T 2081/16, T 1003/19, T 408/21, T 1823/23 and T 1224/24, the board held that the legal consequence outlined in R. 71(5) EPC (the deemed approval of the notified text) did not apply in the present case. According to the board, it is not sufficient that an applicant, having received a communication formally referring to R. 71(3) EPC, pays the required fee and files the required translations. The legal consequence of R. 71(5) EPC only arises if the communication sent also complies with the substantive requirements of R. 71(3) EPC, i.e. it actually contains the text in which the examining division intends to grant the patent, on the basis of the documents filed by the applicant, possibly supplemented by individual marked amendments..

The present board noted that the strict approach to the mechanism of R. 71 EPC advocated in T 265/20, in which the competent board did not follow the approach taken in T 1003/19 and T 2081/16, was not applied in the later decisions T 408/21, T 1823/23 and T 1224/24. In addition, the circumstances of the case at hand differed even more from the situation underlying T 265/20. In the present case, the appellants had in fact brought the relevant error, i.e. the omission of all the drawing sheets by the EPO – over which they had no influence – to the EPO's attention when it first occurred. In this case, the formalities officer's reply led them to understand that the drawing sheets would be taken into account in the event of a B1 publication. It followed that the decision to grant was based on an application in a text which was neither submitted nor agreed by the applicants, so the requirements of Art. 113(2) EPC had not been complied with. Hence, the board decided that the appeal was admissible and the decision under appeal was to be set aside.

According to the board, it has been established case law since T 1003/19 that an examining division's error in compiling the documents intended for grant in a communication under R. 71(3) EPC that makes a clearly unintentional omission of part of the documents proposed by the applicant for grant as indicated in the applicant's last request can still be corrected if the applicant files an appeal against the subsequent grant of the patent within the time limit under Art. 108 EPC, at least if the applicant did not explicitly consent to the incorrect compilation. T 265/20 did not support that case law; but this remained a single decision and was not followed by other boards..

The board held that the present decision did not deviate from G 1/10. It found that a referral to the Enlarged Board of Appeal was not required either to ensure uniform application of the law or to align the case law and Guidelines (see points 3.1 to 3.9.5 of the Reasons).

The board noted that the Guidelines, e.g. in H-VI, do not properly distinguish between cases where a mistake was already contained in an applicant's request or was explicitly approved by an applicant, and cases like the one at hand: where an examining division, by mistake and unintentionally, deviated from the appellant's latest request when listing the documents intended for grant in a communication under R. 71(3) EPC and this was neither pointed out to the applicant nor explicitly acknowledged by it. However, a divergence between the Guidelines and the case law of the boards is not necessarily a reason for a referral to the Enlarged Board. Rather, Art. 20(2) RPBA assumes that under normal circumstances it is enough to state sufficient grounds to enable the decision to be readily understood, such that the Guidelines may be adapted where necessary.