When is the “text-intended for grant” not intended for grant? (T 1003/19)

Recent Board of Appeal decision T 1003/19 poses a riddle: when is it not the intention of the EPO to grant the "text-intended for grant? Before the Examining Division (ED) grants a patent application, they send the applicant a copy of the text-intended for grant (“Druckexemplar”) (Rule 71(3) EPC). The text-intended for grant is normally considered to be, as the name suggests, the text that the ED plans on granting. In response to the Rule 71(3) communication, the applicant approves the text-intended for grant by filing translations of the claims and paying the appropriate fees. If the applicant approves the text-intended for grant, the patent is granted. 

T 1003/19 related to an appeal from a decision of the ED to grant an application based on a text-intended for grant in which all but one of the drawings pages were missing. The applicant had approved the text-intended to grant. In most circumstances, it is difficult for a patentee to correct mistakes in a granted patent based on a text-intended for grant that they have approved. As stated in the Guidelines for Examination: “Since the final responsibility for the text of the patent lies with the applicant or patentee, it is his duty to properly check all the documents making up the communication under Rule 71(3)” (H-VI-3.1). It is difficult to argue, for example, that it was not the intention of the ED to grant a patent containing a mistake introduced and approved by the applicant themselves (G 1/10, IPKat post here).

The ED may, on its own initiative, suggest minor amendments to the text it sends to the applicant for approval. However, the Examiner should indicate any amendments they make to the applicant.

Case background

The application (EP 11846831) in T 1003/19 related to a method for recovering gold or silver. The international application on which the EP application was based (WO 2012/076981) contained 7 pages of drawings showing Figures 1-7. Figure 1 on page 1 showed a method of the prior art, whilst the remaining Figures on pages 2-7 related to the method of the invention.

Silver and gold

The applicant did not amend the drawings during prosecution. However, during examination, the ED began referring to only one page of drawings (i.e. page 1/1). The text-intended for grant provided with the Rule 71(3) communication similarly contained only one page of drawings. The applicant only noticed that pages 2-7 of the drawings were missing after the application had been granted. The applicant filed an appeal against the decision of the ED to grant the patent without these drawings.

Unintentional intention

The BA considered that, in the case in question, there was enough evidence demonstrating that it was not the true intention of the ED to grant the text referred to in the Rule 71(3) communication as the “text-intended for grant”.

First, the applicant had not submitted amended drawings. According to Article 113(2) EPC, the EPO must decide on an application based only on text submitted by the applicant.

Second, removing all the Figures relating to the invention, could not be said to be a minor amendment by the ED. The BA considered the missing drawings to be important for determining the scope of the claims (Article 69 EPC) and for providing a method by which the invention could be performed (Rule 42(1)(e) EPC). Why then would the ED have wanted to remove them? The BA also noted that the Rule 71(3) communication (or any previous communication from the ED) did not explicitly indicate that any of the drawing pages had been deleted.

The BA concluded that the document provided as the text-intended for grant did not correspond to any amendments either requested by the applicant or explicitly suggested by the ED. The BA argued that it was therefore clear that the text provided as the text-intended for grant was not, in fact, intended for grant by the ED (r. 2.4.4). In a nice bit of legal reasoning, the applicant could therefore not be said to have approved the text for grant (by paying the fees and filing translations of the claims), because no text-intended for grant had been provided.

The BA concluded that the applicant had not approved a text-intended for grant. The BA therefore set aside the decision to grant the patent.

So, in answer to the riddle, when is the text-intended for grant not intended for grant: when the document provided as the "text-intended for grant" contains significant amendment that 1) potentially render the claims non-compatible with the EPC, 2) were not submitted by the applicant and 3) are never explicitly described to the applicant by the Examining Division.