J 0033/89 (Correction of drawings) of 11.12.1989

Summary of Facts and Submissions

I. On 29 December 1988 the appellant filed with the European Patent Office a European patent application including seven drawings marked FIG. 1 to FIG. 7. Three drawings (figures 8 to 10) were missing from the application as filed, but referred to in the application and contained in the copy of the priority document sent to the Receiving Section on 18 January 1989.

II. On 27 January 1989 the Receiving Section sent the appellant's representative the communication under Rule 43(2) EPC, also drawing his attention to Rule 88 EPC.

III. By letter of 22 February 1989 the representative requested correction of the application under Rule 88 EPC and filed the missing drawings. On 1 March 1989 the Receiving Section informed the representative that the decision on his request would be taken by the Examining Division, and that the application would be published as filed, with a mention of the request for correction.

IV. By letter of 10 March 1989 the representative asked the Receiving Section to make the correction, citing the Guidelines for Examination in the EPO (A-III, 10, last paragraph). On 20 April 1989 the Receiving Section replied that following an amendment to the Guidelines (to appear in the next edition) it was no longer competent for a matter of this kind. On 26 May 1989 the representative wrote again asking the Receiving Section to consider his request for correction so that the application could be published in full.

V. The application was published on 19 July as No. 0 324 299, without Figures 8, 9 and 10 but mentioning the request for correction on its front page.

VI. On 25 July 1989 the Receiving Section gave a decision rejecting the request for correction on the grounds that it was no longer competent for such requests, adding that the Examining Division would decide the matter.

VII. On 25 September 1989 the representative appealed, asking that the decision of 25 July 1989 be set aside and the correction requested allowed. He argued that a practice sanctioned under the version of the Guidelines used by professional representatives and hitherto applied by the Office could not justifiably be amended unilaterally to the disadvantage of applicants. He also requested that the entire application be re-published.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.

2. The first question arising in this particular case concerns substantiation of the Receiving Section's decision dated 25 July 1989. In the dossier is a draft decision containing grounds, but none are given in the final version sent to the representative. Nor are there any in the copy attached to the representative's notice of appeal. But the Board does not need to go into whether the Receiving Section's decision is invalid because it was not substantiated; it must be set aside anyway for another conclusive reason.

3. The fact that the representative requested correction after notification of the communication under Rule 43(2) EPC is immaterial. The Receiving Section itself mentioned Rule 88 EPC in its communication, thereby giving the applicant to understand that he could still submit a request under that provision. As the Board has already ruled (in decision J 04/85; OJ EPO 1986, 209), the mere fact of various stages in the examination of European patent applications such as their publication (Article 93 EPC) having to be completed at a given time calculated from the filing or priority date does not mean that their normal progress is affected by a delay in applying Rule 43 EPC; pending a decision under Rule 43 the only relevant date is the initial filing or priority date.

4. The Board does not share the Receiving Section's opinion that it was not competent to decide the request for correction under Rule 88 EPC. If some or all of the drawings pursuant to Article 78(1)(d) are not filed on the date of filing of the application, Article 91(1)(g) and (2) of the Convention offers an additional opportunity to the communication under Rule 43 to put matters right. Accordingly, the Implementing Regulations (Rule 88, second sentence) lay down the conditions under which the drawings may be corrected. As regards the Receiving Section's competence in this matter, the Guidelines (A-III, 10, second paragraph) stipulate that decisions on requests under Rule 88 EPC are taken by the Receiving Section unless they require a technical examination. This corresponds to the principle adopted by the Board in the decision cited. If examination of a request for correction under Rule 88 EPC remains within the limits of the Receiving Section's tasks under Articles 16, 90 and 91 EPC, it is only logical that it take the decision in question.

5. The amendment to the Guidelines on which the Receiving Section based its decision (A-V, 2.2, September 1989 version) in no way alters the position. Firstly, the Receiving Section's competence derives from the Convention (namely its Articles 16, 90 and 91), as the Board noted in the decision cited; and the Guidelines cannot amend the Convention. Secondly, the Guidelines in fact still reflect different levels of competence; the principle that the Receiving Section is competent for deciding requests for correction under Rule 88 EPC not requiring a technical examination remains unaltered in the new version (A-III, 10, second paragraph). The amendment concerned must therefore be interpreted as follows: if the description, claims or drawings contain an error necessitating a technical examination, the Receiving Section is no longer competent and must forward the dossier to the Examining Division for decision on the request for correction.

6. Errors within the meaning of Rule 88 EPC can also be omissions, as this Board held in J 08/80 and J 19/80 (OJ EPO 1980, 293, and 1981, 67). In the present case, the description filed expressly mentions Figures 8 to 10 (pages 3, 6 and 7). Two sheets of drawings (Figures 1 to 7) were filed, but none showing Figures 8 to 10 mentioned in the description; this can only be due to error. This is confirmed by the copy of the priority document, which has a third sheet of drawings containing the missing figures.

7. Given the facts in the preceding paragraph, the conditions for applying Rule 88, second sentence, EPC are met. The error - the omission of certain drawings - was easy to check and did not require a technical examination. The Receiving Section was therefore competent, and should have allowed the request for correction.

ORDER

For these reasons it is decided that:

1. The Receiving Section's decision of 25 July 1989 is set aside.

2. European patent application No. 88 403 355.6 is to be corrected by adding to the drawings filed the sheet of drawings 3/3 marked "FIG. 8, FIG. 9, FIG. 10".