Wednesday, 25 May 2016

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.


  1. A good reminder to check over the text and drawings proposed for grant carefully.
    We usually make the client aware of the importance of this final check and either do the work or ask the client to confirm they do not want it done despite the potential consequences, then bill accordingly. Some clients really do not want to spend money. I know you suggest it, but are we really obliged to check if the client is aware of the risks but doesn't want a thorough check (having said that, we would always conduct a thorough check of the claims, and a brief check over the rest of the text.

    1. The point about whether we are obliged to check if the client wants a thorough review is a difficult one. I have a checklist of obvious things to look for when reviewing a r71(3) communication, but there is one particular issue that I think can be very difficult to advise on without a proper review, which is whether any narrowing amendments have been made that might be considered to add matter. If the client is not made aware of the danger of the Article 123(2)/(3) trap, to what extent are we as patent attorneys responsible for anything bad that might happen later?