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BOARDS OF APPEAL

Decisions of the Legal Board of Appeal

Interlocutory decision of the Legal Board of Appeal dated 12 April 1995 - J 21/94 - 3.1.1^*

(Translation)

Composition of the Board:

Applicant: ATOTECH Deutschland GmbH

Headword: Correction/ATOTECH

Article: 123(2) EPC

Rule: 88 EPC

Keyword: "Replacement of application documents"

Headnote

The following point of law is referred to the Enlarged Board of Appeal: Can the complete documents forming a European patent application, that is the description, claims and drawings, be replaced by way of a correction under Rule 88 EPC by other documents which the applicants had intended to file with their request for grant?

Summary of facts and submissions

I. The present application was filed on 10 October 1989. The application dossier contains a request for grant (Form 1001) in which the title of the invention is given in section 24 as "Aqueous acid bath for the galvanic depositing of shiny and crack-free copper coatings and the use of such a bath". The following documents are listed in section 48 of the receipt for documents prepared by the applicants and stamped and initialled by the EPO (page 5 of the request for grant):

...

There is no entry under 4. "Drawings".

II. The documents in the dossier are perforated with "M 10.10.89" and have the title "A device for galvanising or chemically treating metallic parts". They comprise 12 sheets of description, 4 sheets of claims, 6 sheets of drawings and an abstract. On 6 December 1989 the Receiving Section sent the applicants a communication requesting payment of the claims fees for the eleventh and each subsequent claim.

III. On 13 December 1989 the applicants filed a priority document the title and number of sheets of which corresponded to the information given in sections 24 and 48 of the request for grant. On 19 December 1989 they asked for urgent clarification of whether the communication dated 6 December 1989 was a mistake since according to their

documents the application contained only 9 claims. In a telex dated 8 March 1990 the Receiving Section replied that the title of the application was not the same as the title given in the request for grant and that an identical application relating to a "Device for galvanising ..." had been filed on 20 October 1989 which corresponded to the details in the request for grant. On 19 March 1990 the applicants furnished a set of documents for an "Aqueous acid bath ..." which matched the details in the request for grant. As evidence of the fact that these documents should have been enclosed with the request for grant, the applicants cited the priority document. They could not understand how they had come to send what were obviously the wrong documents, since the documents in their file were the correct ones. They requested that the application be accorded the original filing date.

IV. With effect from 3 August 1993, the application was assigned to the current applicants.

V. In its decision dated 5 August 1993 the Receiving Section rejected the request for correction in the form of an exchange of the documents making up the application. In the grounds for its decision it referred to decision J 21/85 (OJ EPO 1986, 117), according to which Rule 88 EPC cannot be applied to a case in which by way of a correction a completely different invention is attached retrospectively to the request for grant. The decision was sent to the previous applicants. It was sent to the new applicants with a communication dated 27 August 1993 concerning the registration of the transfer of rights.

VI. The new applicants lodged an appeal correctly and in due time. In their grounds for appeal dated 3 January 1994 they stated that on the date of filing the Office had received the correct documents relating to an "Aqueous acid bath ...", which were identical to the priority document. Several indications pointed to this. In particular, the

number of sheets for the description and claims given in the receipt for documents was the same as in the correct documents. Moreover, the receipt for documents did not indicate any drawings, and, unlike the incorrect documents, the correct ones did not contain any drawings either. Consequently, the Office had confirmed receipt of the correct documents to the applicants and had the burden of proof that incorrect documents had been received.

VII. All the other circumstances pointed to the fact that the documents pertaining to the present application had been confused by the Receiving Section with those of application No. 89 119 451.6 filed on 20 October 1989. If in fact the wrong documents had been submitted, the discrepancy with the request for grant would have been apparent simply from the lack of indication of drawings. The missing claims fees, the discrepancy between the titles and the provision of an abstract which did not belong to the wrong documents would also have been noticed immediately and without further scrutiny.

VIII. In an interlocutory decision the board pointed out to the appellants with regard to their submission that it was not clear how two identical sets of documents could reach two different case files if in fact two different sets had been filed. There was also no plausible explanation as to why documents which were not received until 20 October 1989 could have been perforated with a date of receipt ten days prior to that.

IX. In response, the appellants submitted that in addition to the correct documents, which had actually been filed, the incorrect documents had obviously also been filed on the filing date. The presence of the wrong documents in the EPO's files could readily be explained by the fact that the correct documents had not been returned to the file after having been removed from it by mistake.

X. Even if the board were not able to accept this argument, the main request should be allowed because it had been intended on the filing date to file an application for the invention relating to an "Aqueous acid bath ...". According to decisions T 726/93OJ EPO 1995, 478 of Technical Board of Appeal 3.2.5 dated 1 July 1994 and J 21/85 (OJ EPO 1986, 117) of the Legal Board of Appeal, this justified the correction of the documents of the application under Rule 88, second sentence, EPC. Decisions G 3/89 and G 11/91 (OJ EPO 1993, 117, 125) of the Enlarged Board of Appeal supported this view. There had been no change in disclosure within the meaning of Article 123 because the documents furnished on the filing date were not meant to be regarded as a disclosure of what had been intended by the request for grant.

XI. The appellants' representative explained with regard to his request for oral proceedings that it was sufficient for these proceedings to be held before the Legal Board of Appeal once the referral procedure had taken place.

Reasons for the decision

1. The Board cannot accede to the appellants' view that evidence has been furnished to prove that the documents filed on 19 March 1990 had already been furnished to the EPO on the filing date.

1.1 The receipt for documents does not reveal anything about the original filing of these documents. It confirmed to the applicants that they had filed a description, claims and abstract in triplicate on 10 October 1989 and that these documents had been given the number 89 118 789.0. This complies with the requirements for the content of the receipt

for documents prescribed by Rule 24(2), second sentence, EPC. On the other hand, the applicants were not given confirmation of the number of sheets in the documents as filed. A footnote on the receipt for documents specifically refers to the fact that no check is made on receipt of the number of sheets. The number of sheets is not part of the information which must be confirmed pursuant to Rule 24(2) EPC or in accordance with an administrative instruction (see Guidelines for Examination in the EPO, A-II, 3.1).

1.2 Lack of confirmation of receipt of drawings does not prove that documents without drawings were received on the filing date. If the check reveals that the documents listed in the prepared receipt have been received this can be confirmed. The responsible staff member was not obliged to look for further documents not listed in the receipt. This would have meant leafing through the documents pertaining to the application, an exercise which it was intended to avoid by not having a check on the number of pages. Even though close scrutiny of documents on receipt is desirable in order to be able to clear up errors as soon as possible, the Filing Office cannot be expected when issuing receipts for documents to carry out an examination of the contents, as this is the job of other departments in the proceedings.

1.3 Neither was it the task of the Filing Office to check whether the fees had been paid in full or to establish that the title in the request for grant did not match the title at the beginning of the description. This is the responsibility of the Receiving Section as part of the formalities examination under Article 91(1) EPC, while the search examiner has the task of determining the content of the abstract (Rule 47(1) EPC; Guidelines B-XI, 2). No conclusions regarding the content of the documents on the filing date can therefore be drawn from the lack of reaction by the Filing Office to deficiencies in the said requirements.

1.4 Finally, the facts assumed by the appellants are in particular contradicted by the contents of the file itself. According to Rule 24(2), first sentence, EPC, the documents making up the application are marked with the date of their receipt. To this end they are perforated on receipt, ie before they are subjected to any kind of substantive processing (see Guidelines A-II, 3.1). This prevents documents becoming mixed up or lost in the event of their being processed before the file is made up. The perforation records the date of receipt for the rest of the proceedings. In the present case the documents relating to a "Device for galvanising ..." were perforated with the date 10.10.89. This rules out the argument initially put forward by the applicants that the documents had been transferred to the present application from an application filed ten days later. There is nothing in the content of the file to confirm their later argument, according to which two different sets of documents were submitted on the filing date. There are no grounds for assuming that the application had contained a second set of documents. The circumstances portrayed by the applicants represent a mere theoretical possibility which is not supported by ascertainable facts, and as such is not capable of convincing the board that a state of facts exists which would contradict the conclusions deducible from the contents of the file.

2. The decision on the main request therefore depends on whether the documents relating to a "Device for galvanising ..." can be replaced by way of a correction under Rule 88 EPC by documents relating to an "Aqueous acid bath ...".

2.1 The appellants referred to two decisions in this connection.

In decision T 726/93 the exchange of the documents forming the application was allowed by way of a correction. However, a distinction was made between the correction of individual features in the application documents and the complete replacement of these documents. The latter case does not represent an amendment of the technical content of the application but rather restores the whole application to its original state as always intended by the applicants.

In contrast, according to decision J 21/85, the wording of Rule 88 EPC expressly rules out "the attaching of another invention - set out in a description, claims and drawings - to a request for grant of a patent that has already been filed" (loc. cit., reasons, 3). Contrary to the appellants' submission, the decision is not concerned with whether there is a discrepancy in the original documents as filed between the request for grant and the description, claims and drawings, but rather rejects as a matter of principle the admissibility of exchanging the complete filed invention.

Thus two boards of appeal have given two different answers to the point of law at issue here, namely whether the complete documents forming the application, that is the description, claims and any drawings, can be replaced by way of a correction.

2.2 In view of this difference, the board is of the opinion that a decision of the Enlarged Board of Appeal is required in order to ensure uniform application of the law. The question as to which documents can be taken as the original disclosure of the invention is not only crucial to the fate of the application to be corrected, but may also have a decisive influence on the patentability of conflicting applications, as the content of the application to be corrected, backdated to the filing date, becomes, for the latter, the prior art pursuant to Article 54(3) EPC. For reasons of legal certainty alone, this question is of

central importance to the patent grant procedure.

2.3 In the opinion of the board, any answer to this question must take into account the Enlarged Board of Appeal's rulings in cases G 3/89 and G 11/91 (OJ EPO 1993, 117 and 125) on the interpretation of Article 123(2) and Rule 88, second sentence, EPC and the relationship between these provisions. The Enlarged Board of Appeal defines the term "content of the application" in accordance with Article 123(2) EPC as being the description, claims and drawings (loc. cit., reasons, 1.4). These parts, which relate to the disclosure and are also mentioned in Rule 88 EPC, may only be corrected within the limits of what a skilled person would derive from the whole of these documents as filed

(loc. cit., part 1 of the answer to the referred point of law). This is intended to prevent extension of the disclosure.

However, if extension of the disclosure alone is not admissible, objections to amendment are all the more justified if the disclosure is to be changed not just in part but in full. For this reason the present board is unable to follow decision T 726/93 in so far as the latter considers, in line with G 3/89 and G 11/91, a "correction of a technical feature in the description, drawings or claims" to be inadmissible if it extends the disclosure, while considering the "complete replacement of the description and claims as filed" to be possible (see T 726/93, reasons, 7). Rather, a correction must always be ruled out if it would lead to a subsequent extension of the content compared to the disclosure on the filing date. For this reason it seems illogical to consider an extension of, for example, 10% to be inadmissible and one of 100% to be admissible.

2.4 Decision T 726/93 also cannot be based on the case law relating to the correction of erroneous designations of a contracting state, because said case law assumes that the

correction of a designation does not affect the disclosure of the invention under Article 83 EPC. This case law relates more to the interpretation of procedural steps, namely the designation of contracting states in the request for grant in accordance with Article 79 EPC. Such amendments are not subject to the restraints of Rule 88, second sentence, EPC, which, in accord with Article 123(2) EPC, rules out an extension of the disclosure after the filing date (G 3/89, Reasons, 2 ff). The case law on the correction of designations thus contributes nothing to the present case.

2.5 For the case under discussion, it makes no difference that, in decision T 726/93, the priority document had been submitted on the filing date, while in the present case it was furnished later. The Enlarged Board of Appeal expressly refused to admit the priority document filed on the filing date in support of a request for correction (G 3/89, reasons, 7). In this respect decision T 726/93 differentiates between the disclosure which determines the question of extension (reasons, 6 and 7) and the question of whether it was immediately evident that nothing else would have been intended than what was offered as the correction (reasons, 10). In conjunction with the latter point, it considers the date on which the priority document was furnished to be decisive. In the opinion of the present board, decision G 3/89 leaves no room for such a differentiation.

2.6 The present board would reach different conclusions depending on whether it followed the principles of decision T 726/93 or those of decision J 21/85. It therefore believes that a decision of the Enlarged Board of Appeal under Article 112(1) EPC is required.

Order

For these reasons it is decided that:

The following point of law is referred to the Enlarged Board of Appeal:

Can the complete documents forming a European patent application, that is the description, claims and drawings, be replaced by way of a correction under Rule 88 EPC by other documents which the applicants had intended to file with their request for grant?