3.1. Informing applicant of the text intended for grant (Rule 71(3) EPC)

New R. 71 EPC reinstates the pre-2002 practice concerning changes to the text intended for grant suggested by the examining divisions. The new text of R. 71(3) EPC (R. 51(4) EPC 1973), which entered into force on 1 April 2012, reads as follows: "Before the examining division decides to grant the European patent, it shall inform the applicant of the text in which it intends to grant it and of the related bibliographic data. In this communication the examining division shall invite the applicant to pay the fee for grant and publishing and to file a translation of the claims in the two official languages of the European Patent Office other than the language of the proceedings within four months."

Thus once the examining division has decided that a patent can be granted it must inform the applicant of the text on the basis of which it intends to do so. This text may include amendments and corrections made by the examining division on its own initiative which it can reasonably expect the applicant to accept. (Guidelines C‑V, 1.1 – March 2022 version).

In T 1849/12 the appellant asked for the withdrawal of the examining division's communication, and requested that the examining division be instructed to issue the communication under R. 71(3) EPC without delay – specifically before the expiry of 18 months from the priority date – and therefore to grant the European patent as quickly as possible. The board noted that Art. 93(2) EPC provided for the possibility of granting a patent before the expiry of the 18-month period. An earlier grant was thus not ruled out, provided the examining division had already concluded that the application met all the requirements of the EPC. As this was not yet so in the case in hand, the possibility provided for in Art. 93(2) EPC of granting a patent before the 18 months expired did not apply. The board did not see any conflict in this regard between the provisions of Art. 93(2) and 97(1) EPC. Under the EPC, the granting of a patent was conditional upon the mandatory examination of all EPC requirements. A patent could only be granted if the examining division considered all examination requirements met. Contrary to the appellant's claim, the examining division had no discretion in this regard. It had to be taken into account that the EPO was responsible for safeguarding the interests of the public, in addition to those of the appellant, and the public had to be able to rely on it doing so.

In T 1377/15 the board pointed out that a communication under R. 71(3) EPC, even when taken as a whole, did not have the character of a "decision". It was not designed to bring examination proceedings to a close but was instead a preparatory action (taken towards any later decision to grant a European patent) which was not open to appeal. The board observed that the communication the appellant had received under R. 71(3) EPC – unlike the one under R. 51 EPC 1973 at issue in T 1181/04 – had expressly referred to the possibility of expressing disapproval and subsequently obtaining an appealable decision giving the reasons for refusing the higher-ranking requests. It therefore held that the conditions set out in T 1181/04 for exceptionally treating such a communication as an appealable decision were not met. Besides, the communication at issue in T 1181/04 had been based on R. 51 EPC 1973 as then in force; that provision, now renumbered as R. 71 EPC 2000, had been amended in the meantime.

For more on the examination procedure under the previous system (R. 71 EPC and R. 51(4) EPC 1973), see Case Law of the Boards of Appeal, 9th ed. 2019, IV.B.3.2.5.