J 0004/85 (Correction of drawings) 28-02-1986
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1. A request for correction under Rule 88 EPC with a view to substituting a new set of drawings for incorrect drawings calls into question the initial content of the European patent application owing to the retroactive nature of the correction. Accordingly, the applicant cannot be validly informed in accordance with Rule 43 EPC until a decision on the request for correction has been given.
2. In applying Rule 88 EPC, it is necessary to take account of all the facts and evidence enabling the applicant's intention to be established immediately when the request for correction is examined, and not to limit the examination to the patent application proper and to the documents filed with it. The priority document is an important element in establishing the applicant's intention and must be taken into consideration even if it was not filed with the European patent application.
3. The duties of the Receiving Section do not include a technical examination of the file; it should not, therefore, take a decision on a request for correction necessitating such an examination, but should leave the request in abeyance until the file has been transferred to the Examining Division.
4. In deciding that Rule 43 EPC did not constitute a lex specialis as compared with the dispositions of Rule 88, the Board has departed from the interpretation of the Convention given in a previous decision (J 01/82) since it considered that corrections made under Rule 88 being retroactive, the applicant could not be informed in accordance with Rule 43 unless the requested corrections were refused.
Correction of drawings
Use of priority documents
Receiving Section not competent to carry out technical examination
Interpretation of the EPC different to that in previous decision
Summary of Facts and Submissions
I. On 9 December 1983 the appellants filed with the French Patent Office under No. 83 402 385.5 a European patent application including four pages of drawings and claiming the priority of a previous patent application filed in France on 10 December 1982 under No. 82 206 95.
II. In a letter dated 19 December 1983 and received at the EPO on 21 December 1983 the appellants' professional representative sent the European Patent Office three new sets of four pages of drawings, requesting that they be substituted for the drawings filed initially on the grounds that "owing to an error, the drawings which were attached (to the application) do not correspond to the description". The priority document including drawings identical to the new drawings provided was also enclosed with this letter.
III. In a registered letter dated 6 February 1984 the Receiving Section informed the appellants that it was not admissible to file drawings subsequently and drew their attention to Rule 43 and to its applicability as explained in EPO Form 1114 attached to that letter. It further pointed out that, since the drawings filed with the application bore no relation to the subject-matter of the application, it would not publish them unless requested to do so by the appellants within the stipulated time limit.
IV. In a letter dated 24 February 1984 and received at the EPO on 28 February 1984 the appellants agreed that the incorrect drawings should not be published and maintained their request for correction, pointing out that they had on 9 December 1983 requested from the French Patent Office an official copy of French patent application No. 82 206 95 and paid the appropriate fee, so that the priority document ought therefore to be considered as having been filed with the EPO on the date of filing of the European patent application and, at all events, within the priority period, which, taking account of the closure of the French Patent Office, expired on 12 December 1983. They further added: "We therefore ask you to regard the use of the drawings in the initial priority document as a correction of a substantive error in accordance with Rule 88 of the Implementing Regulations to the European Patent Convention".
V. In a letter to the EPO dated 9 March 1984 in reply to a communication from the latter dated 8 March 1984 which adhered to the terms of the communication of 6 February, the appellants invoked by way of a new argument the fact "that another official copy of the same request for priority, which had been requested on 6 December 1983, was withdrawn from one of the departments of the French Patent Office on 9 December 1983 and submitted the same day to the department responsible for European applications". A request slip for an official copy dated 6 December 1983 and indicating "International application" as the country of destination was attached to this letter. In addition, the appellants made the following statement: "Our letter of 24 February 1984 was a reply to the communication of 6 February. We wanted the European patent application not to be re-dated. On the contrary, we request correction under Rule 88 of the Implementing Regulations to the European Patent Convention of a substantive error ...".
VI. The European patent application was published without drawings on 4 July 1984 under publication No. 01 127 61 and the appellants filed a request for examination on 5 November 1984.
VII. On 8 October 1984 the Receiving Section gave a decision rejecting the request for correction under Rule 88 EPC and finding, under Rule 43(1) EPC, that the references to the drawings in the patent application were deemed to be deleted.
VIII. The appellants filed an appeal in a letter received at the EPO on 27 November 1984, paying the appeal fee at the same time. In their statement of appeal received at the EPO on 1 February 1985 the appellants reverted to and developed the arguments put to the Receiving Section: in the first place, the filing of a request for an official copy with the French Patent Office and the furnishing by the latter of a receipt designating the EPO as the country of destination was equivalent to sending the EPO the official copy on the date of the receipt and, accordingly, it ought to be possible to consider the drawings in the official copy as those belonging to the European application. The appellants further submit, subsidiarily, that on 9 December 1983, the date of filing of the European patent application, they supplied the department responsible for transferring EPO and PCT files to the competent international authorities with another official copy of the French patent application whose priority was claimed and which was filed in connection with a PCT application. "Therefore, since the drawings in the official copy form part of the application, the representative requests, as previously, that Rule 88 be applied ... ".
IX. In the event of the two above-mentioned requests being rejected by the Board of Appeal, the appellants ask in the alternative that corrections be made to the description under Rule 88 and, when these corrections have been accepted, that new drawings be added under Article 123 and Rule 86.
X. In a final subsidiary request submitted in the event of all the others being rejected, the appellants apply for restitutio in integrum in respect of the opportunity offered by the communication of 6 February 1984 to add the drawings to the European patent application by requesting that it be re-dated to the date on which the new drawings were received at the EPO. The appellants paid the fee for restitutio in integrum on 1 February 1985.
Reasons for the Decision
1. The appeal complies with Articles 106, 107 and 108 and Rule 64 EPC and is therefore admissible.
2. A Board of Appeal must examine the facts of its own motion and is not restricted to the facts, evidence and arguments provided by the appellants and the relief sought (Article 114(1) EPC). If the Legal Board of Appeal considers that the contested decision interpreted the European Patent Convention incorrectly, therefore, it can annul the contested decision even if the appellants have not entered such a claim.
3. The Board considers that, since the request for correction of a substantive error had been submitted by the appellants' representative on 21 December 1983, the Receiving Section was obliged to defer the communication relating to Rule 43(1) EPC until a final decision had been taken on the request for correction of the error. The correction of an error restores the application to the form in which it has been established that the applicant intended to file it, the correction thus taking effect "retroactively" on the date on which the application was filed.
4. The fact that the applicants did not specify in their request of 21 December 1983 that they were basing their request for correction on Rule 88 EPC is immaterial since the letter makes it clear that this was their intention.
5. It has to be borne in mind that the mere fact of various stages in the examination of European patent applications such as their publication (Article 93 EPC) having to be completed at a given time calculated from the filing or priority date does not mean that their normal progress is affected by a delay in applying Rule 43 EPC; pending a decision under Rule 43 the only relevant date is the initial filing or priority date.
6. The Board further considers that in rejecting the request filed on 28 February 1984 for correction under Rule 88 EPC of the European patent application by the subsequent filing of five figures on the grounds "that it is not immediately apparent from all the documents available on the date of filing of the European patent application that the missing drawings were indisputably those filed on 21 December 1983", the contested decision interpreted the Convention incorrectly.
7. Rule 88 EPC, second sentence, lays down as a condition for acceptance of a request for correction concerning a description, claims or drawings that a correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction. In requiring that the correction be obvious in the light of the documents "available on the date of filing of the European patent application", the contested decision adds to the express conditions set out in Rule 88 EPC a requirement which is not justified by any EPC provision. The Legal Board of Appeal has always considered it absolutely necessary when applying Rule 88 EPC to take account of all the facts and evidence enabling the applicant's intention to be established immediately at the time when the request for correction is being examined, and without the least shadow of doubt, and not to limit the examination to the application proper and the documents filed with it. The priority document is an extremely important element when it comes to establishing the applicant's intention and the refusal to take account of it because of its not having been filed at the same time as the European patent application conflicts with the constant case law of the Legal Board of Appeal (J 08/80, OJ 9/1980, pp. 293-298; J 04/80, OJ 10/1980, pp. 351-354; J 19/80, OJ 3/1981, pp. 65-68; and J 04/82, OJ 4/1983, pp. 121-126).
8. In case J 19/80, for example, the Board authorised the correction of a drawing, of which part was missing, on the grounds that the relevant part of the description corresponded to the drawing proposed as a correction and that a comparison with the priority document filed after the European patent application showed clearly that no other drawing than that proposed could have been envisaged by the applicant.
9. At the same time, in deciding to refuse the request for correction under Rule 88, second sentence, EPC on the grounds that "although page 3 of the description shows that the patent application must include five figures and although it is obvious that the drawings filed with the patent application bear no relation to the content of the application, it is not immediately apparent that the missing drawings were indisputably those filed on 21 December 1983", the Receiving Section based that decision on the result of a technical examination of the file, which does not normally form part of its duties under Articles 16, 90 and 91 EPC. It should, therefore, in the present case have left the request for correction in abeyance until the file had been transferred to the Examining Division.
10. Given that the case has to be remitted to the Examining Division for a decision on the request for correction submitted on 21 December 1983, there is no point in examining the request for amendment under Article 123(1) and Rule 86 EPC submitted by the appellants in their statement of appeal.
11. Similarly the request for restitutio in integrum with respect to the opportunity afforded by the communication of 6 February 1984 to re-date the European patent application to 21 December 1983, the date on which the drawings belonging to the application were filed, is inapplicable since that communication has to be considered null and void.
12. In concluding that Rule 88 EPC could be invoked to request corrections consisting in adding to the European patent application drawings omitted at the time of filing and in ruling accordingly that such requests for correction had to be examined first of all before a decision under Rule 43 EPC could be taken, the present decision departs from the interpretation of the Convention given in the previous decision, J 01/82 of 7 April 1982 (OJ 8/1982, pp. 293-295). In the latter case a similar request for correction was refused on the grounds that Rule 43 EPC, which is intended to prevent the addition of new subject-matter to the application in accordance with Article 123(2) EPC, constituted a lex specialis as compared with the general dispositions of Rule 88 EPC and the former alone was to be applied in the case in question.
13. The Board holds that this previous decision interpreted the Convention incorrectly. It considers that it is not possible for the application of Rule 88, second sentence, EPC to be at variance with Article 123(2), given that Rule 88 has the effect of restoring the application to the form which it should have taken on the filing date if the error had not been committed. Rule 43, therefore, does not constitute a lex specialis as compared with Rule 88 EPC, but merely complements its provisions.
14. No request for reimbursement of the appeal fee under Rule 67 EPC has been filed and the circumstances do not justify such reimbursement.
ORDER
For these reasons, it is decided that:
1. The decision of 8 October 1984 by the Receiving Section of the European Patent Office is set aside.
2. Reimbursement of the fee for restitutio in integrum is ordered.
3. The case is remitted to the Examining Division for further examination of the request for correction submitted on 21 December 1983 with a view to replacing the drawings initially filed in error by another set of drawings attached to that request for correction.