Patents
Posted on 21/7/2021

The Board of Appeal dismisses appeal for part of specification of application missing from patent to be incorporated

An example of why should applicants carefully check all documents in the notice of allowance.

A decision by the European Board of Appeals (T 0265/20) sets out the importance of applicants and their representatives carefully checking the contents of European patent applications found allowable for grant for mistakes or missing parts before taking the next step of paying grant and publications fees and filing translations of the claims.

The Background

If and when a European patent application is found allowable for grant a notice of grant is issued, alongside a copy of the specification found allowable for grant, the “Druckexemplar”. The notice sets out a list of the documents which form the specification which the office found allowable for grant. To proceed to grant, the applicant must pay the grant and publication fees and file translations of the claims into the other two official languages of the European Patent Office – French and German, assuming the application (or the original translation) was filed in English.

In accordance with rule 71(5) of the European Patent Convention, if an applicant pays the necessary fees and files the necessary translations they are deemed to have approved the specification communicated to them in the notice of allowance.

In the present case, a notice of allowance was issued for European Patent Application No. 11820257.1. The application as originally filed contained four pages of drawings, which were not withdrawn or otherwise deleted during prosecution. Nevertheless, the notice of allowance did not mention these pages of drawings as forming part of the specification found allowable for grant. The pages were also missing from the Druckexemplar.

The applicant paid the fees for grant and publishing and filed the necessary translations of the claims such that the application could proceed to grant. A patent was subsequently granted. Upon reviewing the granted patent specification and realising the pages of drawings were missing, the applicant filed the appeal against the decision to grant a patent, arguing that the decision should be set aside and a new decision issued granting a patent including the pages of the drawings.

The Appeal

In the appeal, the applicant argued that the Druckexemplar and the documents set out in the notice of allowance were not the specification on the basis of which the examining division was intending to grant a patent. Since the specification of the application as originally filed contained the pages of drawings, the file history of the application did not indicate the removal of any of these pages of drawings, and that references to the drawings still formed part of the description of the granted patent, it was clear that the drawings were intended to form part of the granted patent. The specification of the granted patent therefore did not correspond to any specification submitted by the applicant, nor did it correspond to any specification agreed to by it.

The applicant further argued that neither they nor the examining division realised the documents listed in the notice and forming the Druckexemplar did not correspond to the specification with which the applicant was requesting a patent be granted. The communication was clearly erroneous, due to an error introduced by the examining division (not including the pages of drawings). They therefore argued that they could not be considered to have approved the specification for grant, since an applicant can only be considered to approve the specification communicated to it by filing the fee for grant when the applicant has been informed of the specification with which the examining division in fact intended to grant the patent.

The Board of Appeal was not convinced by these arguments. They set out that it does not matter if the specification intended for grant is correct or whether the applicant is aware of any mistakes in the specification – if they pay the necessary fees and file the necessary translations, they are approving the specification in the notice of allowance for grant.

The Board emphasised that it is an applicant’s responsibility to check whether the specification communicated to it as part of the notice of allowance corresponds to what it requested, and to request amendments to the specification if it does not correspond.

As such, the Board of Appeal dismissed the appeal. The decision to grant the patent was maintained, the patent remaining in its current form without any pages of drawings.

Conclusion

Given the Board of Appeal’s decision in this case, it is clearly important for applicants and their representatives to carefully check the documents noted in the notice of allowance as forming part of the specification found allowable for grant and the Druckexemplar for mistakes and missing parts, since even if said mistakes and missing parts are introduced by the European Patent Office it is still the applicant’s responsibility to catch them before paying the grant and publication fees and filing the claims translations and so approving the specification.

If you have any questions regarding this decision, please get in touch to speak to one of our team.