6.3. Any other requirement laid down in the Implementing Regulations
6.3.1 General provisions governing the presentation of application documents (Rule 49 EPC)
General provisions governing the presentation of the application documents are to be found in R. 49 EPC. These include the requirement in R. 49(2) EPC that the documents making up the application shall be presented so as to allow electronic and direct reproduction in an unlimited number of copies. The application which was the subject of J 4/09 was rejected by the Receiving Section on the ground that it was in breach of this provision. The Legal Board of Appeal disagreed, observing, first of all, that the fact that the drawings had become part of the EPO's electronic file and did not differ noticeably from the filed versions went against the receiving section's view.
It went on to say that it was not part of the examination as to formal requirements to consider what precisely could be gathered from the drawings. Rather, it was the applicant who determined the scope of disclosure by selecting the application documents and their form, so that their informative value was his responsibility. An analysis going beyond the points to be examined on filing under R. 46 EPC and R. 49(1) EPC to R. 49(9) and (12) EPC was impermissible. In particular, it was not permissible for improved drawings to result in a disclosure which could not be found in the original version of the application; nor could the applicant be compelled to change the drawings and so sacrifice a disclosure which, in his view, could only take this form.
- J 11/20
Abstract
In J 11/20 the applicant appealed a decision of the Receiving Section refusing their application under Art. 90(5) EPC in conjunction with R. 58 EPC. The sole reason for the refusal was that the four amended drawings filed by the applicant to remedy formal deficiencies in the application documents were not in agreement with the application documents as originally filed and, despite the invitation by the Receiving Section, the applicant had not corrected this deficiency in due time.
In the statement of grounds of appeal, the appellant had objected that the Receiving Section had committed a substantial procedural violation by exceeding its competence when issuing the communication concerning the formal requirements of the application documents by addressing substantive matters that belonged to the competence of the examining division. Thus, the first question addressed by the Legal Board concerned the competence of the Receiving Section and, in particular, whether the Receiving Section had acted ultra vires.
The Legal Board recalled that the Receiving Section was responsible for the examination on filing and the examination as to formal requirements of the application (Art. 16 EPC). It was established case law that the responsibilities of the Receiving Section did not involve any technical examination of the application (J 5/12, J 7/97, J 33/89 and J 4/85).
Within this framework, the Legal Board explained that the Receiving Section was competent under R. 58 EPC to identify inconsistencies in the application documents which were immediately apparent from the face of the documents, including whether formal discrepancies were present between amended documents and the documents as originally filed, provided no technical knowledge was required.
In the case in hand, the deficiency noted by the Receiving Section was of a purely formal nature and did not involve any assessment in terms of disclosure. Hence, no procedural violation was committed in this respect.
The Legal Board also assessed whether the Receiving Section should have granted interlocutory revision of the appealed decision. The Legal Board referred to J 18/08 and explained that a deficiency on which a decision under Art. 90(5) EPC is based could be corrected at the appeal stage. Such a case was different from the situation where the non-observance of a time limit automatically led to the application being deemed to be withdrawn, i.e. where the legal consequence automatically ensued when an act required within a specific time limit was not performed.
In the case in hand, the Legal Board observed that, when the appeal was filed, the deficiency had already been remedied, albeit late, with the filing of the correct drawings. Considering that the ground for refusal of the application under Art. 90(5) EPC had been remedied, the Legal Board established that the Receiving Section should have granted interlocutory revision in accordance with Art. 109 EPC.