3.2. Approval of the text by the applicant

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. Thus, the applicant could not be considered to have been adversely affected by the decision under appeal within the meaning of Art. 107, first sentence, EPC. Accordingly, the appeal filed by the applicant was inadmissible pursuant to R. 101(1) EPC. 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. Hence, although R. 71(6) EPC would have allowed the applicant to request further corrections to the communicated text, the appellant did not apparently realise that the documents referred to in the communication under R. 71(3) EPC did not correspond to the documents in its previous request, i.e. the application documents as amended by its letter dated 20 February 2018. 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. In T 1003/19 the board held that agreement to the communicated text was not decisive, since the applicant had not been notified of the text in which the examining division intended to grant a patent, and only in that case would the provisions of R. 71(5) EPC have applied. The board did not follow T 1003/19 and T 2081/16. 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) did not reflect the appellant's requests. In the board's judgement, Art. 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 noted that the applicant (appellant), upon receiving the communication pursuant to R. 71(3) EPC with the text intended for grant, in which drawing sheets 1/4 to 4/4 were missing from the list of documents, made no comments. Instead, it paid the fee for grant and publishing and filed the translations of the claims in the other official languages within the period of 4 months. The board held that the prerequisites for the legal consequence foreseen in R. 71(5) EPC were thus 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 held that it was the applicant's responsibility to check whether the text communicated to it corresponded to what it had requested. The fact that an applicant did not exercise its right to request amendments under R. 71(6) EPC could therefore only be interpreted as consent to the communicated text, i.e. the text intended for grant. Whether or not the applicant noticed a possible error in the text had no effect on the fact that its approval, whether given explicitly or deemed to have been given under R. 71(5) EPC, was binding. The board further considered that decisions T 1003/19 and T 2081/16 did not amount to diverging case law which required a decision of the Enlarged Board of Appeal pursuant to Art. 112(1) EPC to ensure the uniform application of the law. It expressed that 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 when making a judgement regarding the deemed approval and its binding effect. Moreover, it could identify no convincing reasons in this respect in the cited decisions. See also chapter V.A.2. "Party adversely affected (Article 107 EPC)".

In T 646/20 the board found no support for any obligation of the examining division to defer a decision of grant until the expiry of the four-month period in a case where the applicant had at any given time within this period of time given approval to grant and thereby allowed the examining division to issue a corresponding decision. It would be rather strange if the examining division had to defer a decision for the eventuality that the applicant had second thoughts. In the case in hand, following the R. 71(3) EPC notification, the applicant gave its explicit approval to issue the decision to grant; however, following the decision to grant, the appellant then voiced its disapproval together with a request for further processing – filed on the date that the decision to grant was due to be published in the European Patent Bulletin. The board distinguished the case in hand from T 1/92 (OJ 1993, 685), which related to contradictory statements of the applicant prior to the decision of grant being taken by the examining division. The board in the case in hand was also not convinced by the appellant's argument that an approval sent in response to a R. 71(3) EPC communication could not be interpreted as a waiver of further options or remedies. Every approval of the text of a patent implied a waiver of the remaining infinity of texts in which a patent could be granted. The board noted in its catchword that further Member States could not be designated after grant. With reference to decision G 1/10 (OJ 2013, 194), the board concluded that in the interest of legal certainty, the patent in the version as granted should no longer be open to amendments and that the applicant had had "adequate means at his disposal" to remedy beforehand. In the board's view, it was incumbent on the applicant to verify the complete file in order to spot any inconsistencies it may wish to draw attention to. Inconsistencies related to text and the designated Member States in the communication under R. 71(3) EPC and not raised in response thereto must be considered as approved by applicant.

In T 2081/16 the board distinguished the case at hand, where the patent had not been granted based on documents approved by the applicant, from G 1/10 (OJ EPO 2013, 194). It held that a decision to grant pursuant to Art. 97(1) EPC which was based on an application in a text which was neither submitted nor agreed to by the applicant, as was the case here, did not comply with Art. 113(2) EPC. 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. 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. This was fundamentally different from attempts to impute mistakes in amended claims which were introduced by an applicant to the examining division "by suggesting the examining division did not intend to make a decision which in fact included the very text approved by the applicant himself – in order to bring the applicant's own error within the ambit of R. 140 EPC" as referred to by the Enlarged Board in G 1/10 (see point 11 of the Reasons).

In the decision under appeal in T 1003/19 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 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 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 arriving at its decision, the board stated that 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 meaning of the word "text" (in German: "Fassung") is not limited to written information but may contain visual information as can be deduced from R. 73(1) EPC: "The specification of the European patent shall include the description, the claims and any drawings." With reference to the case in hand 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.