T 1785/15 - If you're reading this it's too late

The end of the examination procedure at the EPO starts with a communication under Rule 71(3) EPC, which informs the applicant that the examining division is prepared to grant the application on the basis of an accompanying version of the application text. The text intended for grant (a.k.a. the druckexemplar) is typically an assembly of the originally filed application, together with any amendments the applicant has made along the way, and usually with further amendments made by the examiner. Examiners often make amendments to tidy up the application so it complies with the EPC, such as inserting a characterising clause to comply with Rule 43(1)(b), mentioning a relevant document to comply with Rule 42(1)(b) or amending the description to conform with the claims (Article 84 EPC). Normally the examiner's amendments are fairly easy to identify and a decision on whether to approve them is straightforward. If any are not acceptable, for example if the examiner gets something wrong, it is always possible to respond with a request under Rule 71(6) to have them changed. If the changes are minor and unlikely to be a problem, the right to receive a further communication under Rule 71(3) can be waived, and the application can then go on to get granted without further ado.

All this is straightforward and well known, at least to European practitioners. An important point to note is that the communication under Rule 71(3) is the applicant's last chance to get things right before the application gets granted. Approving the text for grant is therefore not something to be taken lightly. Examiners, applicants and even patent attorneys can make mistakes and this is the opportunity to correct any that might have been made. An applicant that responds to a Rule 71(3) communication without first checking carefully that everything is how they want it to be is running the risk of not getting what they want and not being able to do anything about it afterwards. As the Enlarged Board decision of G 1/10 made clear, errors made by the applicant during prosecution cannot be corrected after grant, which can prove fatal to the resulting patent. Possibly more importantly, errors made by the examiner that have been approved by the applicant at the Rule 71(3) stage also cannot be corrected after grant. As stated in G 1/10, the responsibility for any errors remaining in the text after grant is the applicant's alone, whether the error was made by them or by the examining division.

A recent decision, T 1785/15, has emphasised the need to be careful when considering whether to approve the text for grant. The application, 09756869.5, entered the European regional phase in 2012 and the applicant made some amendments to the claims the following year in response to the international written opinion. The examining division then issued a communication under Rule 71(3) in February 2015 with a clean and marked-up version of the text. Substantial changes were made to the claims, together with a few formal changes to the description. The applicant then paid the grant fee and filed translations of the claims into French and German within the usual four month period. Only after a decision to grant was issued did the applicant point out to the examiner that the claims contained errors. By that point, however, it was too late to do anything about it. The applicant's attorney, who somehow got the impression from the examiner that the decision to grant could be appealed, filed an appeal against the decision to grant.

The Board first pointed out that appeals could be filed by any person adversely affected by a decision (Article 107 EPC). By approving the text for grant, the applicant had signalled its approval, leaving no room for the notion that they were adversely affected by the decision to grant. Rule 140 EPC allowed obvious mistakes in decisions to be corrected but, as G 1/10 set out, this was not available for correcting the text after approval by the applicant. The applicant's request for a correction was therefore inadmissible. Normally this would not mean that the appeal fee was refunded, since the applicant should have known that the appeal was hopeless. They had, however, been given the impression that an appeal could be validly filed after speaking with the examiner. The Board therefore decided that the appeal fee could be refunded, even though the appeal was rejected as inadmissible.

This case is another warning, as if it were needed, that the communication under Rule 71(3) should be taken very seriously and the text for grant should be carefully checked before it is approved. The responsibility for this is with the applicant, but applicants are often unaware of the importance of getting things right at this stage and may simply wave an application through, not wanting to spend any more time and money than necessary to get the application granted. The responsibility is then in practice down to the patent attorney, who should always carefully check the text for grant and point out anything that might be a problem, even if this means adding a bit more to the bill, or having to write off some time. Obvious errors or mistakes can then be spotted and corrected before it becomes too late.

G 1/15 (partial priority) - an update

My post on the G 1/15 amicus briefs, initially written on 3 March, has been amended extensively as the briefs kept on appearing on the EP register. The total, including comments from the EPO President, the patentee and the opponent, has now risen to 37 following a very late submission from Malcolm Lawrence, now of Concerto IP. The drawing on the right is taken from this submission, and is a fairly typical example of how clearly the issue is presented.

As you may recall, Mr Lawrence was in some ways responsible for the whole problem of poisonous divisionals and related issues, which he first raised as an issue in an article for epi information in June 2011, which I commented on here. At the time, no mention was made of Article 88(2) EPC being a solution to the problem, or even being related to it at all. I first raised it as a possible solution in a post in May 2013 here, which has since been given the name "Tufty's Law", although the same reasoning was arrived at a few months earlier in T 1222/11. His latest submissions, which do mention Article 88(2), are typically very wordy, running to a total of 39 pages, including drawings. Thankfully it is only necessary to read the first page to find out what he thinks the answer to question 1 should be, which is a qualified yes. I have not read the remaining 38 pages (as I value my sanity too much, what is left of it) but if anyone reading this has, and finds any interesting points, I would be grateful for any comments pointing them out.

Oral proceedings have been scheduled for 7-8 June 2016 at the EPO in Munich for the Enlarged Board to hear submissions from the parties in the proceedings. A final decision will presumably be arrived at a few months afterwards. Because this is an issue I have been keeping an eye on for several years, I have persuaded myself that it would be good idea to go to Munich to attend the oral proceedings so I can see for myself how the arguments are presented and maybe get an idea of the thinking of the Enlarged Board. A blog post or two will of course be written while I am there. If any readers are going to be there too, please get in touch with me and we can meet up. I can be contacted at tuftythecat at gmail dot com or via Twitter @tuftythecat. I also have a work email address, which is fairly easy to find.