b) Deemed approval under Rule 71(5) EPC 

If applicants pay the fees and files the translations within the due period (and files or requests no corrections or amendments to the text proposed for grant in the R. 71(3) EPC communication), they are deemed to have approved the text intended for grant (R. 71(5) EPC) (see Guidelines C‑V, 1.1 – March 2022 version).

The above also applies where the R. 71(3) EPC communication was based on an auxiliary request, provided that the applicant does not reply to the R. 71(3) EPC communication by requesting that a grant be based on a higher ranking request. The above also applies where the R. 71(3) EPC communication included proposals by the examining division for amendments or corrections of the text intended for grant. Consequently, provided the applicant does not reject these proposed amendments or corrections in his reply, the completion of the above acts constitutes approval of the text containing the amendments or corrections as proposed by the examining division (Guidelines C‑V, 2 – March 2022 version).

In T 1003/19 the board found that the decision under appeal did not comply with Art. 113(2) EPC and that the examining division had committed a substantial procedural violation; the granted version of the patent corresponded neither to a text submitted by the appellant nor to a text agreed by it, nor to a text deemed to have been approved by it. The appellant had not requested the grant of a patent with any other than the seven drawing sheets as initially submitted and published. The communication under R. 71(3) EPC, however, referred only to "drawings, sheets 1/1 as published". The board noted that appellant did not expressis verbis approve the amended application documents as referred to in the communication and found that the appellant also could not be deemed to have approved the list of documents communicated to it in this communication according to R. 71(5) EPC. The consequence as stipulated in R. 71(5) EPC, i.e. "the applicant ... shall be deemed to have approved the text communicated to him under paragraph 3", only applied where the applicant, according to R. 71(3) EPC, had been informed "of the text in which it [i.e. the examining division] intends to grant" the patent. The board stated that under normal circumstances it was to be assumed that the text referred to in a communication under R. 71(3) EPC reflected the true will of the examining division and was therefore identical to the text on the basis of which the grant of the patent was intended. In the present case, however, it found sufficient evidence to conclude that this was not the case in respect of the communication under R. 71(3) EPC. The board further stated that the EPO may on its own initiative suggest minor amendments; however the removal of all drawing sheets showing embodiments of the invention could not be expected to be accepted by an applicant.

The board stated that it had not deviated from G 1/10, which based its consideration on the requirement according to R. 71(3) EPC that the applicant must be informed of the text in which the examining division intends to grant a patent (see point 10 of the Reasons) and deals with the applicant's possible reactions thereto, like the implicit approval of this text. In contrast thereto the board's decision in the case in hand was based on the fact that the text intended for grant by the examining division had, based on verifiable facts, not been communicated to the appellant and, therefore, R. 71(5) EPC did not (at that time) apply. As a result, no text had been approved by the appellant. The request for reimbursement of the appeal fee was however rejected; while the error was committed by the examining division, the appellant had several instances to spot this error and, at the latest, could and should have noticed it when comparing the text of the communication under R. 71(3) EPC and the "Druckexemplar".

In T 2081/16, the board found that where the text intended for grant is not communicated to the applicant under R. 71(3) EPC, the fact that the appellant subsequently files a translation and pays the fees for grant and publishing is not decisive. The provisions of R. 71(5) EPC, in this regard, refer to R. 71(3) EPC and therefore presuppose that the applicant has not been notified of any text but of the text intended for grant (emphasis added by the board). Only in this case would R. 71(5) EPC apply and would the filing of a translation and the payment of the relevant fees imply the approval of the text communicated to it. The board found that in the present case neither the documents referred to in Form 2004C nor the "Druckexemplar" reflected the text in which the examining division intended to grant the European patent. In arriving at its decision, the board stated that it had not deviated from G 1/10 and that Art. 21 RPBA 2007 did not therefore apply. In G 1/10, the Enlarged Board of Appeal found that R. 140 EPC was not available to correct the text of a patent. This question was not at stake in the case in hand. In the case in hand, no text had been approved by the applicant.

In T 408/21 the board stated that when trying to clarify the intention behind an action or request, this was frequently done in the case law of the Boards of Appeal by identifying the "true will" of the actors in a case. Normally the documents indicated in a communication according to R. 71(3) EPC corresponded to the applicant's request and to the examining division's intention; however, in a case where there appeared to be severe doubts as to whether the documents indicated in R. 71(3) EPC were actually those intended to be granted by the examining division, the board considered the above-mentioned clarification of the "true will" of the examining division an appropriate means. In line with the T 1003/19 the board concluded that the examining division did not indicate in the communication according to R. 71(3) EPC the text it intended to grant in the case in hand. Following T 2081/16 and T 1003/19, the board found that R. 71(5) EPC correspondingly did not apply in this case, as in the step preceding the deemed approval the applicant has to be informed of the text in which the examining division intends to grant the patent according to R. 71(3) EPC.

In T 2277/19 the board held that the text referred to in the communication under R. 71(3) EPC had to be regarded as the text intended for grant. Since this text on the basis of which the patent was granted was approved by the appellant, the requirements of Art. 113(2) EPC were met. The appellant had approved the text intended for grant (subject to the correction of some minor errors in the description). Hence, the board considered that the examining division had legitimately expected the applicant to have checked and verified the Druckexemplar, in particular since the applicant had requested some amendments to the text intended for grant. The board found that the examining division did not have any reason to assume that the approval was based on the prerequisite that only drawing pages 1 to 7 were actually intended for publication. Moreover, the appellant expressly waived its right to the issue of a further communication under R. 71(3) EPC. The appellant argued that the facts in the case in hand were very similar to those of decision T 1003/19 with reference also to T 2081/16, but the board did not follow those earlier decisions. In its view there was no legal basis in the EPC for a distinction between the text referred to in a communication under R. 71(3) EPC and that reflecting what the examining division actually intended. Moreover, R. 71(6) EPC addressed the possibility that the text communicated under R. 71(3) EPC did not reflect the appellant's requests. In the board's judgement, R. 71(3) EPC thus imposed on the applicant a duty to check and verify this text. The fact that an applicant did not exercise its right to request amendments under R. 71(6) EPC could therefore only be interpreted as approval of the communicated text, i.e. the text intended for grant. Whether the applicant noticed a possible error had no effect on the fact that this approval was binding.

In T 265/20 the board held that the prerequisites for the legal consequence foreseen in R. 71(5) EPC were fulfilled. The legal consequence was that the applicant was deemed to have given approval to the text communicated to it under R. 71(3) EPC. The unambiguous wording of R. 71(5) EPC did not allow for an interpretation other than the foreseen legal consequence. Firstly, there was no legal basis in the EPC for a distinction between the text referred to in a communication under R. 71(3) EPC and the text really intended by the examining division (see also T 2277/19, point 1.3 of the Reasons). Secondly, it was not the content of the text which triggered the deemed approval under R. 71(5) EPC, but the applicant paying the fee and filing the translations according to R. 71(5) EPC. It followed that it was pointless to explore the "true will" of the members of the examining division when editing the communication pursuant to R. 71(3) EPC. It was the applicant itself with whom the final responsibility for the text remained, not the examining division. The board further considered that decisions T 1003/19 and T 2081/16 did not amount to diverging case law; it had no doubt that the wording of R. 71 EPC did not allow it to be concluded that the "true will" of the examining division was something that had to be taken into consideration.