A recent case, T 0216/26, concerns an application in which drawing pages were inadvertently omitted from the text proposed for grant by the European Patent Office. Although the applicant approved the text, they later appealed the decision to grant so that they could have the missing drawing pages reinstated.
The appeal was allowed, as would be expected judging from similar cases decided by the EPO. However, the applicant requested reimbursement of the appeal fee. The Board of Appeal denied the request and issued a reminder that the applicant is expected to check the text carefully. Consequently, the applicant must expect to have to bear the costs of the appeal in cases like this.
Background
The examining division issued a text proposed for grant that included only the first of seven drawing sheets. Neither the applicant nor the examiner had made any amendment to the drawings during prosecution. Moreover, the communication accompanying the text proposed for grant contained no suggestion of any amendment of the drawings.
The applicant approved the text proposed for grant. After realising the text was missing six drawing sheets, the applicant filed an appeal within the prescribed two-month period, seeking to get the text corrected.
Previous case law suggested that such an appeal was validly filed, i.e. it met the requirement that the appellant must have been adversely affected by the appealed decision. Case law confirmed that the omission of pages in a text proposed for grant results in the applicant being adversely affected, irrespective of whether the applicant had approved the text.
Of more note is the fact that the applicant also asked for a reimbursement of the appeal fee. Reimbursement can be made when the EPO has made a mistake serious enough to be deemed a substantial procedural violation, but only if the reimbursement is deemed equitable.
Decision of the Board of Appeal
The Board of Appeal followed the reasoning set out in T 0387/25 to allow the appeal. As a reminder, an applicant’s acceptance of the text proposed for grant under Rule 71(5) EPC can only occur if the EPO’s communication including the text for grant met all the requirements of Rule 71(3) EPC. The first part of Rule 71(3) says, “Before the Examining Division decides to grant the European patent, it shall inform the applicant of the text in which it intends to grant it…“. In this case, it was very clear that the communication did not include the text that the examining division intended to allow, and so the requirements of Rule 71(3) were not met.
As for the request for reimbursement of the appeal fee, the Board did not need to consider whether the examining division’s error was serious enough to amount to a substantial procedural violation. Instead, the Board said that it would be inequitable to reimburse the appeal fee. This was because of the applicant’s failure to notice and respond to the incorrect text proposed for grant: in effect, their failure to use the first instance opportunity to address the mistake denied them the opportunity to a reimbursement of the appeal fee. As there were errors on the parts of both the EPO and the patentee, it is easy to see why reimbursement was judged inequitable.
The Board issued a reminder in their decision:
“The fact that a narrow interpretation of Rule 71(3) and (5) EPC allows for an appeal to be treated as admissible and allowable should however not be misinterpreted as an invitation to neglect the applicant’s duty to carefully check the documents submitted in the text intended for grant sent with the communication under Rule 71(3) EPC.”
Hence, although successful with the appeal, the applicant had to bear the costs of the appeal.
Takeaway
The EPO clearly expects a careful review of a text proposed for grant to check that it is as expected. In this case, the error should have been obvious as entire pages were omitted. Errors are not always that obvious though, for example has the correct version of a replaced page been included in the text for grant? Although they can be time consuming, such checks should not be neglected.
This is because failure to spot errors can, at best, incur the expense of appeal. It also incurs a delay in getting the patent application to grant, and so is of particular concern where enforcement of a patent is contemplated. Where there is ambiguity about the text that the examining division intends for grant, correction through appeal may not be possible at all.
For further details, please contact Nigel Tucker or your usual Boult advisor.
