Did the Applicant Accept the Text for Grant?

French version available here

Introduction

The decision of the European Patent Office (EPO) Technical Board of Appeal in T0408/21 (application number: EP13855497.7) underscores the importance of ensuring that the text intended for grant is explicitly accepted by the applicant. This decision highlights procedural safeguards under Articles 113(2) and 97(1) EPC and their application in cases where discrepancies arise between the granted text and the applicant's submissions or approvals.

The case revolved around whether the granted patent adhered to the text agreed upon by the applicant, particularly concerning omitted drawings. It illustrates the procedural requirements for communications under Rule 71(3) EPC and their implications for applicants, patentees, and examining divisions.

Summary of the Invention

The patent concerns a method for producing high-strength steel crane rails with improved mechanical properties. Key features include:

Controlled Cooling and Heating

• A systematic cooling process to achieve desired microstructures.
• Controlled reheating to refine the grain structure.

Material Composition

• Specific alloying elements such as carbon, manganese, and silicon for enhanced strength and ductility.

Surface Treatment

• Processes to improve wear resistance and reduce surface imperfections.

The invention seeks to optimize the balance between strength and toughness while reducing manufacturing costs, making the steel suitable for heavy-duty crane rails and similar applications.

Key Points of the Decision

1. Procedural Background

The examining division granted the patent on 14 January 2021 based on a communication under Rule 71(3) EPC dated 24 August 2020. However, the granted text excluded certain drawings (sheets 1/6 to 6/6), which were part of the original application and referenced in the description.

The applicant (ArcelorMittal) appealed the decision, arguing that:

• The communication under Rule 71(3) EPC failed to inform them of the omission of drawings.
• The granted text did not correspond to any version submitted or agreed upon.

2. Legal Issues

The Board evaluated:

• Whether the applicant was informed of the text intended for grant as required under Rule 71(3) EPC.
• Whether the omission of drawings contradicted Article 113(2) EPC, which mandates that the EPO decide only on a text submitted or agreed upon by the applicant.

3. Arguments by the Parties

• Applicant’s Position:The applicant contended that the omission of drawings was not communicated in the Rule 71(3) EPC notice. The granted text referred to the drawings in the description but failed to include them in the Druckexemplar (official text for grant). The applicant argued that this omission violated Article 113(2) EPC.
• Examining Division’s Position:The examining division did not explicitly address the omission, assuming that the description’s references to the drawings sufficed to indicate their inclusion.

4. The Board’s Analysis and Findings

• Rule 71(3) EPC:The Board emphasized that Rule 71(3) EPC requires the communication of the complete text intended for grant, including all relevant parts of the description, claims, and drawings. The omission of drawings without explicit communication was deemed non-compliant.
• Article 113(2) EPC:The granted text contradicted the applicant's approved text, which included references to the omitted drawings. This discrepancy violated Article 113(2) EPC, as the applicant never agreed to a version excluding the drawings.
• Consistency with Prior Case Law:The Board referred to decisions T 1003/19 and T 2081/16, where similar issues arose. These cases established that applicants must be fully informed of all intended amendments and omissions before grant.

Final Decision

The Board concluded that the examining division failed to communicate the text it intended to grant. As a result:

1. The decision to grant was set aside.
2. The case was remitted to the examining division with instructions to grant the patent based on:

• Description pages 1–14 filed on 4 May 2018.
• Claims 1–13 filed on 6 December 2019.
• Drawing sheets 1/6 to 6/6 as originally published.

Lessons to Be Learned

1. Ensure Clarity in Communications

Examiners must clearly indicate all amendments or omissions in the Rule 71(3) EPC communication. Applicants should scrutinize these communications for any discrepancies.

2. Verify Consistency Across Documents

Applicants must ensure that all referenced parts of the application, including drawings and descriptions, align with the granted text. Any inconsistency should be promptly addressed during prosecution.

3. Understand Procedural Safeguards

Article 113(2) EPC serves as a critical safeguard for applicants, ensuring that the granted patent corresponds to an agreed text. This principle is reinforced through established case law, including decisions G 1/10 and G 1/12.

4. Importance of Documented Agreement

Applicants should maintain clear records of all submitted and agreed-upon versions of the application to prevent disputes over granted text.

5. Rely on Established Case Law

Decisions such as T 1003/19 and T 2081/16 provide valuable guidance on procedural requirements and applicant rights under the EPC.

Legal Basis

• Article 113(2) EPC: The EPO may decide upon the application only in a text submitted or agreed upon by the applicant.
• Rule 71(3) EPC: Communication of the text intended for grant.
• Case Law:
• T 1003/19: Clarification of procedural requirements under Rule 71(3) EPC.
• T 2081/16: Emphasis on the applicant’s right to be informed of all intended amendments.
• G 1/10: Scope of corrections under Rule 140 EPC.

Conclusion

Case T0408/21 reinforces the procedural safeguards ensuring that granted patents correspond to a text explicitly agreed upon by the applicant. It highlights the critical role of Rule 71(3) EPC communications in maintaining transparency and procedural integrity. For both applicants and examiners, attention to detail in these communications is essential to avoid procedural missteps.

Link to the case : HERE 

Contact

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Legal Disclaimer

The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.