6. Examination of formal requirements
Overview
6. Examination of formal requirements
Under Art. 90(3) EPC, if the patent application is accorded a date of filing, the EPO examines, in accordance with the Implementing Regulations, whether the following requirements have been satisfied:
- Art. 14 EPC, concerning the language of the patent application (see chapter III.F.1.);
- Art. 78 EPC, concerning the requirements of a European patent application (see in this chapter IV.A.6.1.);
- Art. 81 EPC, concerning the designation of the inventor (see in this chapter IV.A.6.2.);
as well as any requirements laid down in the Implementing Regulations, and, where applicable;
- Art. 88 EPC, concerning claiming priority (see in this chapter IV.A.8.);
- Art. 133 EPC, concerning general principles of representation (see chapter III.V.);
- any other requirement laid down in the Implementing Regulations (see in this chapter IV.A.6.3.).
Under Art. 90(4) EPC, where the EPO notes that there are deficiencies which may be corrected, it shall give the applicant an opportunity to correct them. If any deficiency noted under Art. 90(3) EPC is not corrected, the patent application shall be refused unless the EPC provides a different legal consequence (Art. 90(5) EPC).
In J 18/08, the Legal Board held that, where an application is refused under Art. 90 (5) EPC, the deficiency on which the refusal decision was based can be corrected at the appeal stage. From this it follows that if an appeal is filed against such a refusal under Art. 90(5) EPC, the board has to examine whether the deficiency noted has been corrected or not. The present case was different from the situation where the non-observance of a time limit automatically leads to the application being deemed to be withdrawn. In such a case the legal consequence automatically ensues when an act required within a specific time limit is not performed, without any decision to be taken concerning the refusal of the application (R. 112 EPC).
- J 9/20
Catchword:
A machine is not an inventor within the meaning of the EPC.
- J 8/20
Catchword:
A machine is not an inventor within the meaning of the 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.
- Annual report: case law 2022
- Summaries of decisions in the language of the proceedings