J 0010/84 (Amendments) 29-11-1984

Summary of Facts and Submissions

I. On 8 April 1983, the appellant filed a European patent application under No. 83103437.6, claiming priority based on a United States national patent application filed on 12 April 1982.

II. On 20 June 1983, by letter dated 15 June 1983, before receipt of the European search report, the appellant's representative submitted amended claims, stating that he was aware that it is not possible to file officially new claims until the search report is received but asking that these amended claims be incorporated in the application immediately the European search report was sent to him. In his letter he expressly drew attention to the provisions of Article 52(4) EPC and Rule 86(2) EPC.

III. On 18 August 1983, the European search report was despatched to the appellant's representative.

IV. On 30 August 1983, a communication was sent to the appellant's representative informing him that the technical preparations for publication of the application had been completed and that the application would be published on 26 October 1983. No reference was made to the appellant's request for incorporation of the amended claims in the application.

V. By letter dated 6 September 1983, received on 8 September 1983, the appellant's representative stated he presumed that the amended claims had been incorporated in the application and would be published with the application.

VI. By a communication dated 21 September 1983, the Receiving Section replied that: (a) the amended claims could not be accepted, since they were filed prior to receipt of the search report; (b) it was impossible for the EPO to comply with requests for such amendments to be made, if they were filed before that moment; (c) after receipt of the search report, the applicant or his representative has to take action himself to bring about incorporation of the desired amendments; (d) the new claims would not be published, since technical preparations for publication had been completed before receipt of the letter dated 6 September 1983; (e) the new claims would be submitted to the competent Examining Division during the examination procedure.

VII. By letter dated 22 November 1983, the appellant's representative answered the communication, asserting that the Receiving Section's attitude was unreasonable in the circumstances and that it would be reasonable for the Receiving Section to act on a request received before it could be acted on, immediately it became possible to act on it. An appealable ruling was requested.

VIII. By a further communication dated 30 December 1983, the Receiving Section declined to give an appealable ruling because the application had already been published and there was, for the same reason, no basis for giving an appealable decision under Rule 69(2) EPC. An appealable decision could only be taken if the appellant's representative would file a clear statement as to the subject matter upon which a decision would be based.

IX. By duly confirmed telex dated 5 January 1984, the appellant's representative again asked for an appealable decision. He asserted that the fact that the publication of the application in question had already taken place was no reason to refuse to give a decision and he cited two decisions of the Legal Board of Appeal (Case J 05/81, OJ EPO 1982, 155 and Case J 03/82, OJ EPO 1983, 171).

X. By letter dated 1 February 1984, received on 7 February 1984, the appellant requested a decision formally refusing to publish the claims with the European patent application.

XI. By the decision under appeal, dated 21 February 1984, the Receiving Section refused the request filed on 7 February 1984. In the decision, it was stated that it would be possible to publish a corrigendum if the request were allowed.However, Rule 86 EPC only allowed amendments to be accepted if they were requested after isuance of the search report. It was not the duty of the EPO to undertake steps which had to be taken by an applicant. Refiling of amendments submitted too early could be effected by a simple instruction to the Office. In the present case the instruction was considered as having been given on 8 September 1983, i.e. after technical preparations for publication had been completed. Therefore, there could be no publication of the amendments: Rule 49(3) EPC.

XII. A Notice of Appeal accompanied by a Statement of Grounds of the Appeal was filed against the decision of the Receiving Section on 16 April 1984. The appeal fee was duly paid. In the Statement of Grounds of Appeal the appellant's representative stated that as no reply was received to the letter of 15 June 1983 it was assumed that it was going to be acted upon at the appropriate time. If the appellant's representative had been told that the request was not going to be acted on, he could have made a request for the inclusion of the new claims immediately the search report was received. The possibility of amending claims before publication of the European patent application was a very important matter because of the rules of national law relating to "provisional protection".