J 0020/94 (According of a filing date) of 24.7.1995

Summary of Facts and Submissions

I. European patent application No. ... relating to a safety-gate flag for ski racing was filed on 24 August 1993 claiming Austrian priority of 26 August 1992. The documents filed on that date comprise the Request for grant form (Form 1001), a handwritten description (with the exception of the cover sheet) and five figures. Line "A.2 Claims" of Section 46 of the pre-printed Receipt for documents form (page 5 of the Request for grant form) contains the note "werden nachgereicht" ("will be filed later").

II. In a communication from the Receiving Section dated 30 September 1993 the applicant was informed that the application did not meet the requirements for according a filing date since it contained no patent claims. On 5 October 1993 (received on 11 October 1993) the applicant filed a clean copy of the originally filed description together with nine claims. In a telefax dated 29 October 1993 the applicant was informed that the filing date would have to be changed and the priority could no longer be claimed since the priority date claimed preceded the filing date by more than one year.

III. On 2 November 1993 the applicant replied that the original description already contained a claim in the following passage:

"One further point I should like to stress in particular is that in figures 4 and 5 the opening 36 in figure 4 and the opening 45 in figure 5 are to have a special patent claim..."

After consulting the search examiner the Receiving Section was unable to detect the wording of a claim in the passage cited and drew the applicant's attention to the fact that figure 5 contained no reference number 45 and that the main claim actually filed was in no way directed towards the openings mentioned in the text. In a communication under Rule 39 EPC dated 14 February 1994 the Receiving Section informed the applicant that the filing date had been fixed as 11 October 1993.

IV. In a communication dated 16 February 1994 the Receiving Section informed the applicant in accordance with Rule 41(3) EPC that the priority date claimed preceded the filing date by more than one year and that this deficiency could be corrected within one month; failure to do so would mean that no priority could be claimed. In his reply dated 21 February 1994 the applicant re-stated his view that the original documentation was sufficient for according a filing date and requested that the priority date be accorded as claimed.

V. In a decision dated 5 July 1994 the Receiving Section refused the request that the priority date be accorded as claimed and that the filing date accorded to the application be that on which documents were received. While the original description did contain a reference to a claim, it lacked sufficient technical features. A search would therefore not have been possible on the basis of the original documentation, as had been confirmed by the search examiner.

VI. In a letter dated 28 July 1994 (received on 30 July 1994) the applicant lodged an appeal, filing a statement of grounds and paying the appeal fee.

VII. The applicant argued that, from the passage cited, the following claim could, among others, have been formulated:

"Flag for use in ski racing in which ... ."

The search examiner would have been able to perform a search on the basis of such a claim without difficulty. Moreover, there was nothing to prevent him carrying out a search on the basis of the claims that followed before the search commenced. The relevant formal requirements of the EPC were to be interpreted narrowly since they appeared to be devoid of meaning. In response to a communication from the Board, the appellant added that with the sentence in the description "One further point I should like to stress in particular is that the opening 36 in figure 4 is to have a special patent claim..." the following claim had been filed:

"Gate flag, as shown in Figure 4, with an opening (36) according to figure 4."

Even assuming such a claim contained deficiencies, these could be corrected during the grant procedure. The sole matter at issue here was whether a claim of any kind had originally been disclosed.

VIII. The appellant requested that the application be accorded a priority date of 26 August 1992 and that the appeal fee be refunded.

Reasons for the Decision

1. Under Article 80(d) EPC for an application to be accorded a filing date the documents filed must contain at least one claim. Since, in the case in point, the documents originally filed do not contain any element described as a claim, the requirement of Article 80(d) EPC can only be said to have been complied with if another part of these documents can be viewed as being a claim. This is the assumption of both the department of first instance and the appellant (left undecided in J 20/85, OJ EPO 1987, 102, reasons, 7).

2. The appellant rightly points out that the original documents do not have to comply with the formal requirements of the provisions governing the application (Rule 26 ff EPC) (Article 80(d), second half-sentence, EPC). Accordingly, in practice it is held to be sufficient for a document to be identified which appears to include one or more patent claims (Guidelines for Examination in the EPO, A-II, 4.5). If no document designated as a claim or claims can be identified however, there must be some indication that some other part of the documentation is intended to be a claim. Nor does it appear to be ruled out a priori that a part of the description can be viewed as a claim, although these two parts of the application serve different purposes which are defined in Articles 83 and 84 EPC. While the description is the place for disclosing a reproducible invention, the claims serve to define the subject- matter for which protection is sought. A part cannot therefore be taken arbitrarily from the description and be reinterpreted as a claim. On the contrary, on the date they are filed the application documents must contain information which can be recognised as a subject-matter for which protection is sought.

3. There is some indication of this in the case in point. It becomes clear from the passage cited by the applicant that protection is to be sought for the opening 36 in figure 4, although the passage in question fails to define this opening unequivocally. The wording of the passage ("is to have") refers to the future, indicating that the definition of the subject-matter for which protection is to be sought will follow. This is borne out by the applicant's stating in the pre-printed Receipt for documents form that the claims will follow. At all events, this passage alone does not appear to be suitable for or intended as defining the subject- matter for which protection is sought. For one thing, the form the opening takes is unclear. While the reader has an idea of the form of opening from figure 4 and the description, there are a number of possibilities for defining it.

Finally, the appellant argued that the text in question contained a claim in which the gate flag with its opening was defined by a single reference to the figure. Such a definition is not however immediately derivable from the text cited. Nor is it obvious, because it is clearly not a standard formulation of the claim within the meaning of Rule 29(6) EPC. The text also fails to indicate whether the opening is to be claimed in isolation or in conjunction with other features. The latter could be viewed as being indicated by the second half of the sentence, which the appellant did not cite,

"..., since without these openings a function ..., would quite simply not be possible."

which hints at an interaction between the openings and other features. The appellant submitted several versions of a claim which he contends was contained in the original description. The fact that he derives widely differing wordings for the claims from one and the same passage would appear to indicate that the clear wording of a claim is not immediately apparent from the text in the description.

4. Furthermore, from a reading of the description as a whole, the reader would hardly expect a single claim directed towards the design detail, highlighted by the appellant, of one of five figures. The disclosure focuses on the features of a ... . The subsequently filed claims merely confirm this reading. A claim corresponding to the entire disclosed content cannot therefore be derived from the detail of a description of a figure cited by the appellant. A more likely place to look for one would be in the general part of the description (page 1), according to which (introduction and final paragraph) the following claim would be conceivable:

"Safety-gate flag for use in ski racing, ... ."

5. This again, however, can only be regarded as one of a number of possibilities. Neither the structure nor the text of the description shows conclusively that the said passages are to be understood as representing a claim. From the foregoing, therefore, it must be concluded that the description as filed contained no passage of text that was immediately recognisable as a patent claim.

6. The decision in this case is not therefore dependent solely on the issue left undecided in J 20/85 (see above) as to whether a passage in the description can also be considered as constituting a claim. The Board could only allow the appeal if it were to consider it sufficient for the purposes of satisfying Article 80(d) EPC that a claim could be derived from the description. In the appellant's view the relevant provisions in this case should be interpreted narrowly, not only because they are purely formal requirements, but also because they are devoid of any meaning.

7. The Board cannot agree with this. It sees no support for the argument that formal provisions should in principle be interpreted narrowly. The provisions of the Convention are to be interpreted primarily in the light of their object and purpose (see, for example, G 1/94, OJ EPO 1994, 787, in particular reasons, 7). Hence, in cases of doubt when interpreting a formal provision, the issue is which interpretation is in line with the objectives of the provision. Here it would certainly have to be borne in mind that formal provisions can have the recognisable aim of ensuring legal certainty or that proceedings can be conducted effectively.

8. The requirement that a claim be filed on the filing date clearly serves to speed up the search process. Under Article 92(1) EPC in conjunction with Rule 86(1) EPC, the search report must be drawn up on the basis of the original claims and should be published together with the European patent application (Article 93(2) EPC). European applications filed subsequent to national applications are generally filed at the end of the priority year - as in the present case. This means that as a rule only some six months are available for preliminary and formalities examination, search and publication. As formalities examination is carried out parallel to the search (Article 91 EPC), the time remaining for the search is the period between completion of preliminary examination (Article 90 EPC) and commencement of printing (see Article 92 EPC). The time available can be considerably reduced if a translation of the application documents has to be filed under Article 14(2) and Rule 6(1) EPC, if the fees mentioned in Article 90(3) EPC are only paid during the period of grace under Rule 85a EPC, or if further search fees are payable under Rule 46(1) EPC. Such eventualities can in themselves, and irrespective of the workload in the search divisions, lead to the search report not being completed in time for publication. Given these constraints, there would be no time to complete further rectifying of deficiencies under Article 91 and Rule 40 EPC to allow an applicant to file claims subsequently within the usual time limits (Rule 84 ff EPC) without this causing further delay in the drawing up of the search report.

9. The drafters of the Convention attached particular importance to the public being informed of as yet unexamined applications at an early stage. Since the search report allows conclusions to be drawn about the prospects of an application's success, it is of considerable importance as a source of information both for applicants and for their competitors. At the same time, great stress was also placed on keeping the time limit for requesting examination, which is linked to the publication of the European search report, to a minimum (see van Empel, "The Granting of European Patents", Leyden, 1975, point 370). It is true that the legislator did provide for subsequent, separate publication of the search report (Article 93(2), second sentence, EPC), but, for the reasons outlined above, the intention was for the search report to be published simultaneously with the application, the assumption being that this would where possible be the case (Memorandum to the EPC, note on Article 93, published in "Begründung zum Entwurf des Gesetzes über internationale Patentübereinkommen", Bundestagsdrucksache 7/3712, p. 416). The provisions adopted, which correspond to Article 11(1)(iii)(e) and (3) PCT, are intended to prevent delays in completing the search report wherever possible. The Board, therefore, is not convinced by the appellant's arguments that Articles 80(d) and 90(2) EPC are devoid of meaning.

10. The appellant is not however alone in insisting on a restrictive interpretation of Article 80(d) EPC. Bossung argues that the patent claim required at the outset of proceedings is legally meaningless. A reasonable interpretation of the text could lead to only original documents with a text which appears to contain the disclosure of an invention being required (Münchner Gemeinschaftskommentar, issue 8, 1986, Art. 80 EPC, points 99-101). In his view, the legislative purpose outlined above is not a sufficient reason for refusing to accord a filing date, since the filing of a purely formal claim, while sufficient to satisfy Article 80(d) EPC, is ill-suited for the search if the claim poorly characterises the invention (ibid., note 97).

It is true that where a search is conducted on the basis of the original claims there is no guarantee that the claims will have been formulated in a way that is best suited to the search. Under Article 92(1) EPC, therefore, the search must be conducted with due regard to the description and any drawings. This does not, however, mean that for the purposes of a properly conducted search serving as a basis for an assessment of novelty and inventive step claims can be dispensed with entirely (Rule 44(1) EPC).

11. On the other hand, there is no denying that in practice European patent searches are not completed in good time to the degree envisaged by the legislator. Thus in 1994, for example, some one-third of all applications were published without a search report (European Patent Office, Annual Report 1994, p. 37). This gives cause to question whether the drastic legal consequence arising from failure to comply with Articles 80(d) and 90(2), second sentence, EPC is a suitable and appropriate means for ensuring early completion of the European search report.

12. In this connection the Board would like to draw attention also to Article 8(2) and Rule 7(2) of the draft of a Patent Law Treaty, which would not allow the contracting parties the mechanism provided for in Articles 80(d) and 90(2), second sentence, EPC. Under this draft the only justification for sanctioning failure to file claims with the original documents by refusing to accord a filing date would be if the applicant failed to comply with an invitation to rectify the deficiency and where appropriate pay a surcharge (Records of the Diplomatic Conference for the Conclusion of a Treaty Supplementing the Paris Convention as far as Patents are Concerned, Volume 1: First Part of the Diplomatic Conference, The Hague, 1991, WIPO, Geneva, 1991, Basic Proposal, pp. 18-20, p. 50 ff; see also the proposal by the Swiss delegation in PLT/DC/56, ibid., p. 154 ff; for the discussions of Main Committee I, see ibid., pp. 294-321).

13. The according of a filing date is a fundamental element in the patent grant procedure, since both the establishment of a priority right and the safeguarding of a priority year are dependent on the prescribed requirements being satisfied. Given the doubts raised and the differences in opinion, as well as the threat of final loss of rights for the European applicant concerned, the Board feels that a decision of the Enlarged Board of Appeal is required under Article 112(1)(a) EPC as to the conditions under which a filing date can be accorded if expressly formulated claims have not been filed.

ORDER

For these reasons it is decided that:

The following points of law are referred to the Enlarged Board of Appeal:

1. For a filing date to be established in respect of a European patent application is it necessary for the filed application to contain, in addition to a description, at least one claim which is formulated separately from the description and is recognisable as such?

2. If the answer to question 1 is no:

For a filing date to be established within the meaning of Article 80 EPC, is it sufficient if there is at least one claim which, although not expressly formulated as such, is derivable from the invention as described?

3. If the answer to question 2 is yes:

To what extent must a claim which is not expressly formulated as such be derivable:

(a) Is it necessary for at least one claim to be directly and clearly recognisable from the text of the description, or

(b) Is it sufficient for the description to disclose an invention in such a way that it is possible to recognise subject-matter to be protected for which a claim could be formulated ?