Text intended for grant, or “unintended” for grant as the case may be
4 November 2019
A recent case (T1003/19) has highlighted what can go wrong at the grant stage of a European patent, but gives hope for applicants that have not checked the text intended for grant as closely as they might have done. The decision by the Board of Appeal essentially found that if there is enough evidence that text approved by the Applicant could never have been intended by the Examining Division, this amounts to a fundamental procedural defect and the original decision to grant the patent may be set aside.
Text Intended for Grant
When the EPO intends to grant a patent application, it issues a communication under Rule 71(3) EPC containing the ‘text intended for grant’ or ‘Druckexemplar’. The final responsibility for checking this text lies with the Applicant and is approved by paying the required fees and filing translations of the claims. The Examining Division may suggest minor corrections but, importantly, these must be highlighted to the Applicant.
The case in question concerned an application (EP 11846831, based on international application WO 2012/076981) relating to a method of recovering gold or silver. A sequence of errors led to the grant of a patent without six of the original drawing sheets. More unfortunate was that the only remaining drawing was Figure 1, clearly marked ‘prior art’. All drawing sheets relating to the invention itself were missing. The Applicant appealed the decision to grant the patent without the drawings.
Evidence and Judgement
The communication issued under Rule 71(3) EPC with the text intended for grant referred only to drawing, sheet 1/1. Neither the Office, nor the Applicant noticed this error.
The Applicant had not withdrawn the drawings, and there had been no reference to amendment to the drawings during prosecution. Removal of the drawing sheets could be in no way considered a minor amendment by the Examining Division, and there was no indication that any such amendment had been made.
Based on the above evidence, it was considered that the decision to grant was based on a fundamental procedural defect, and there could be no reasonable expectation that the text was ever intended for grant in the first place. The figures were also considered necessary for determining the scope of the claims, their absence falling foul of the requirements of the EPC.
The Applicant could not therefore have approved the text intended for grant because it had never been provided.
The application was referred back to the Examining Division to reissue the intention to grant based on the correct documents. However, reimbursement of the Appeal fee was rejected because the Applicant had had the opportunity to detect the discrepancy in the documents.
This case highlights that, where a mistake is missed in the text intended for grant, it may be possible to appeal the decision to grant a patent if it can be proved that the ‘text intended for grant’ was not actually intended by either side.
However, this serves as a reminder that the responsibility for checking the final text lies with the Applicant, and encompasses all parts of the document. Whilst remedy of mistakes may be possible in some circumstances, it is still costly.
Dr Abbie Fisher
Life Sciences & Chemistry Group
If you require further information on anything covered in this briefing, please contact Abbie Fisher (firstname.lastname@example.org; +44 1926 310701) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP November 2019