A. Preliminary and formalities examination
2. Responsibility for formalities examination
Under Art. 16 EPC, the Receiving Section is responsible for the examination on filing and the examination as to formal requirements of European patent applications. It retains responsibility up to the time when the Examining Division becomes responsible for the examination of the European patent application under Art. 94 EPC (R. 10 EPC).
The limitation in time of the Receiving Section's responsibility was previously in Art. 16 EPC 1973. The move to the Implementing Regulations ensures greater flexibility in determining when competence passes within the EPO from one department to another.
The Receiving Section is also no longer limited to the EPO's branch in The Hague as it was under Art. 16 EPC 1973. According to T 1012/03, the amendments to Art. 16 and 17 EPC deleting the allocation of the Search Divisions and Receiving Section to the branch at The Hague clearly indicate that the EPC no longer restricts the competence of the President of the EPO to decide which transactions shall be carried out at Munich and which at The Hague.
In G 1/02 (OJ 2003, 165) the Enlarged Board of Appeal pointed out that Art. 90 EPC 1973 and Art. 91 EPC 1973 entrusted to the Receiving Section certain duties relating to formalities examination of applications on filing, and the section's decisions may give rise to a loss of rights (see Art. 91(3) EPC 1973) which are appealable (see Art. 106 EPC 1973). The Receiving Section is composed entirely of formalities officers who – just like their counterparts working with opposition divisions – receive specialist training but are not required to have studied a technical subject or law at university.
In J 18/84 (OJ 1987, 215) the Legal Board of Appeal distinguished the respective areas of responsibility of the Receiving Section and the Legal Division regarding the designation of the inventor. The examination of an initial designation of inventor complying with Art. 81 EPC 1973 fell exclusively to the Receiving Section as one of its formalities examination responsibilities under Art. 16 and 91 EPC 1973. (These responsibilities are now in Art. 16 and 90(3) EPC). However, once entries began in the Register of European Patents – which under Art. 127, 2nd sentence, EPC 1973 coincided with the publication of the European patent application – the Legal Division might be competent for disputed corrections.
In J 13/02, the board took the view that the fact that the EPC 2000 versions of Art. 16 to 18 EPC were already applicable in accordance with Art. 6 of the Revision Act did not alter the fact that the Receiving Section's competence came to an end once a valid request for examination has been made with the result that the examining division had to examine whether the application met the requirements of the EPC 1973 (Art. 94(1) EPC 1973 in conjunction with Art. 96(2), 97(1) and 97(2) EPC 1973).
See in this chapter IV.A.5.5.3 for the extent of competence of the Receiving Section in respect of requests for correction under R. 139 EPC.
- 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.