New Rule 56a and amendments to Rule 56 EPC - Background, requirements and consequences

Cees Mulder (NL) and Roel van Woudenberg (NL)

Introduction

The Patent Law Treaty (PLT) was adopted in 2000.The Patent Law Treaty (PLT) was adopted on 01.06.2000 at a Diplomatic Conference in Geneva and entered into force on 28.04.2005. Currently (August 2022), there are 43 member States. See https://www.wipo.int/treaties/en/ip/plt/ (accessed 25.08.2022).Although open to intergovernmental organization (Art. 20(3) PLT) and despite the European Patent Organisation indicating its wish to become a party tot the PLT (Document MR/2/00 of the Travaux Préparatoires to the EPC 2000), the Organisation never ratified the PLT. The aim of this Treaty is "to harmonise and streamline", on a world-wide basis, formal procedures relating to national and regional patent applications and maintenance of patents. The PLT does not establish a uniform procedure for all parties to the PLT but leaves parties free to require fewer or more user-friendly requirements than those provided in the PLT. In an article written by one of the current authors, it was concluded that the goals of the PLT were not achieved due to ambiguities in the Treaty.Cees Mulder: "Patent Law Treaty: Promises Not Delivered - How the Negotiations Resulted in Ambiguities in the Treaty" in The Journal of World Intellectual Property 17 (2014) pp.160-190.

During the Revision of the European Patent Convention (EPC) adopted in 2000,The revised European Patent Convention (also referred to as "EPC 2000") was adopted on 29.11.2000 at a Diplomatic Conference in Munich and entered into force on 13.12.2007.
See https://www.epo.org/law-practice/legal-texts/epc.html (accessed 25.08.2022). the main features of the PLT were implemented in an exemplary manner into the EPC. Amongst others, the following items were adopted in the Implementing Regulations to the EPC:

• Requirements for according a date of filing to a European patent applicationArt. 5(1) PLT; Rule 40 EPC. including relief with respect to language requirements implying that a European patent application may be filed in any language;Art. 5(2)(b) PLT; Art. 14(2) EPC.
• Filing a description and/or drawings by reference to another application;Art. 5(7) PLT; Rule 40(1)(c) EPC.
• Filing missing parts of the description or missing drawings;Art. 5(6) PLT; Rule 56 EPC.
• Addition or correction of a priority claim;Art. 13(1) PLT; Rule 52(2) and (3) EPC.
• Restoration of right to priority.Art. 13(2) PLT; Rule 136(1) EPC.

Apart from the above alignment with the PLT, the EPO co-develops and aligns with other international developments, in particular with the Patent Cooperation Treaty (PCT).

New Rule 56a EPC

On 1 July 2020 PCT Rule 20.5bis was inserted into the PCT.PCT Rule 20.5bis was adopted by the PCT Union Assembly on 09.10.2019 and entered into force on 01.07.2020.
See https://www.wipo.int/meetings/en/details.jsp?meeting_id=52258 (accessed 25.08.2022). The Rule lays down a procedure for the correction of "erroneously filed" application documents. PCT Rule 20.5bis allows an applicant of an international application - in limited circumstances - to replace any erroneously filed claims and/or the description of the application (or any part thereof), or any erroneously filed drawings with the equivalent "correct" version of the claims, the description or the drawings (or any part thereof) as contained in the priority application.See e.g., documents PCT/WG/12/9 (29.04.2019) and PCT/WG/12/24 (14.06.2019) of the PCT Working Group.

The introduction of PCT Rule 20.5bis was aimed at aligning the practices of receiving Offices and designated/elected Offices in the special case where an applicant had erroneously filed a wrong element or part of the international application. In particular, the European Patent Office (EPO) acting as receiving Office under the PCT applied a different interpretation relating to what can be filed as a "missing part" under existing PCT Rule 20.5.According to PCT Rule 20.5(a) a "missing part" refers to the situation where a part of the description, a part of the claims, a part or all of the drawings is or appears to be missing; whereas a "missing element" refers to the situation where all of the description or all of the claims is or appears to be missing. The EPO argued that - by definition - the term "missing part" of the claims or the description indicates that some part of the claims or the description was missing but other parts of the claims or the description had been filed.Also see Document CA 4/21 (President EPO; 07.09.2021) item 12 referring to J 27/10, reason 12.
See https://www.epo.org/modules/epoweb/acdocument/epoweb2/524/en/CA-4-21_en.pdf (accessed 25.08.2022).Document PCT/WG/6/20, items 5-6.
See https://www.wipo.int/meetings/en/details.jsp?meeting_id=28622 (accessed 25.08.2022).. Incorporation by referenceSee PCT Rules 4.18 and 20.6. of a "missing part" would - in the interpretation of the EPO - thus require that the "missing part" of the claims or the description that was to be incorporated by reference indeed "completes" that (incomplete) element as contained in the international application on the international filing date, rather than adding a new element.See e.g., Practical Advice in PCT Newsletter No. 07-08/2015.
See https://www.wipo.int/edocs/pctndocs/en/2015/pct_news_2015_07_08.pdf (accessed 25.08.2022).

To overcome the divergent interpretations on existing PCT Rule 20.5, PCT Rule 20.5bis was introduced to ensure that PCT Rule 20.5 would only cover "truly" missing parts or missing elements. As PCT Rule 20.5bis was incompatible with the practice under the EPC, the EPO notified the International Bureau of WIPO of its incompatibility.The EPO as receiving Office and designated Office did not apply PCT Rules 20.5bis(a)(ii) and (d) as of 01.07.2020. This reservation will be withdrawn when Rule 56a EPC enters into force on 01.11.2022.
Also see Official Notices (PCT Gazette) issued by WIPO (20.01.2020).

New Rule 56a EPC aims at aligning the practice under the EPC with PCT Rule 20.5bis."Notice from the EPO dated 23 June 2022 concerning the correction of erroneous filings in proceedings before the EPO", OJ EPO 2022, A71, in particular items 1-4. The new Rule is constructed in the same way as current Rule 56 EPC but includes additional provisions in Rule 56a(2) and (8) EPC, as will be explained below.

After receipt of a European patent application, the EPO will first examine whether the application is entitled to a date of filing in accordance with Rule 40 EPC. If during this check, the EPO notes that the description, claims or drawings or a part thereof, appear to have been filed erroneously (i.e. unintentionally) the applicant will be invited pursuant to Rule 56a(1) EPC to file the correct document (or part thereof).Similar to Rule 56(1) EPC, the applicant may not invoke the omission of the invitation by the EPO. If the applicant does not reply to the invitation of the EPO in due time, any filing of the correct application documents (or parts) will be deemed not to have been made and the erroneously filed application documents (or parts) will remain in the application or be restored to the application (Rule 56a(5) EPC). A request for correction must be filed within two months of that invitation.Rule 56a(1), last sentence, EPC.

Under Rule 56a(2) EPC a provision has been added that formalises the EPO's practice with regard to corrections of application documents received on the date of filing.PCT Rule 20.5bis(b) PCT contains a corresponding provision. It allows the correction and exchange of application documents before or on the date of filing without changing the date of filing. Rule 56a(2) EPC applies to the unlikely and rare case that the applicant has already paid the fees on filing for the first-filed application on the date of filing.The argument of the fees is weak, because if the applicant withdraws the first-filed application, the search fee will be refunded. The EPO will only retain the filing fee. Anyhow, Rule 56a(2) EPC avoids that the applicant needs to file a second application and pay the corresponding fees again, if the applicant recognises on the date of filing (or earlier if the date of filing cannot yet be accorded) that erroneously filed incorrect application documents have been filed.A similar provision can be found in PCT Rule 20.5bis(b). Note that when filing correct application documents under Rule 56a(2) EPC, the erroneously filed application document are "deemed not to have been filed".Note that the wording in Rule 56a(2) EPC: "the erroneously filed application documents or parts shall be deemed not to have been filed" is different from the wording in corresponding PCT Rule 20.5bis(b) where it is written "the erroneously filed element or part concerned shall be removed from the application".
According to OJ EPO 2022, A71, item 15: all application documents (and parts) are considered part of the file, irrespective of whether or not they are considered to form part of the application as filed. As such they will be open to file inspection from publication of the application (Art. 128(4) and Rule 144 EPC). Upon reasoned request of the applicant, erroneously filed documents which are not considered to form part of the application as filed may be excluded from file inspection.

Rule 56a(3) EPC allows an applicant to correct of own volition the description, claims and drawings (or parts thereof) after the date of filing, if they were filed "erroneously".The correct application documents may be filed within a non-extendable period of two months of the date of filing (Rule 56a(3) EPC). The erroneously filed application documents will be deemed not to have been filed,Note that the wording in Rule 56a(3) EPC: "the erroneously filed application documents or parts shall be deemed not to have been filed" is different from the wording in corresponding PCT Rule 20.5bis(c) where it is written "the erroneously filed element or part concerned shall be removed from the application".
According to OJ EPO 2022, A71, item 15: all application documents (and parts) are considered part of the file, irrespective of whether or not they are considered to form part of the application as filed. As such they will be open to file inspection from publication of the application (Art. 128(4) and Rule 144 EPC). Upon reasoned request of the applicant, erroneously filed documents which are not considered to form part of the application as filed may be excluded from file inspection. and the correct documents will be added. As a consequence, the date of filing will be shifted to the date of receipt of the correct application documents or parts thereof. The applicant has to realise that a change of the date of filing may result in a loss of the right of priority.

Note that in Rule 56a(3) EPC, apart from a reference to an invitation from the EPO under Rule 56a(1) EPC, a reference to an invitation from the EPO under Rule 56(1) has been added.The same applies to amended Rule 56 EPC where a reference to the communication under Rule 56a(1) was added to Rule 56(2) EPC. This allows an applicant to file correct application documents or missing parts following either invitation of the EPO.

The requirements for meeting the "completely contained" criterion in Rule 56(3) EPC have been taken over in Rule 56a(4) EPC.The formal requirements in Rule 56a(4) EPC correspond to those in Rule 56(3) EPC. If the correct application documents (or parts thereof) are completely contained in the priority document, Rule 56a(4) EPC allows an applicant to maintain the initial date of filing when adding those documents or parts.The priority of the earlier application must be claimed on the initial date of filing. This requirement has also been added in Rule 56(3) EPC as amended. The erroneously filed application documents will remain in the European patent application and may only be removed by amending the application during the proceedings up to grant.The same procedure is provided for in PCT Rule 20.5bis(d). Any removal of the erroneously filed documents during grant proceedings will be subject to the requirements for amending a European patent application under Art. 123(2) EPC.OJ EPO 2022, A71, items 10 and 16.

Note that the wording in Rule 56a(4) EPC (emphasis added) "within the period under paragraph 3" is not correct, because two (concurrent) periods may be applicable either two months from an invitation from the EPO under Rule 56a(1) EPC and/or two months from an invitation from the EPO under Rule 56(1) EPC. It would have been better to use a formulation like (emphasis added) "within the applicable period under paragraph 3".See the next part of this article "Amended Rule 56 EPC" for a more detailed discussion on the two concurrent periods.

If the applicant fails to comply with the requirements referred to in Rule 56a(4) EPC within the applicable period,Similar to Rule 56a(4) EPC, the wording of Rule 56a(6) EPC (emphasis added) "within the period under paragraph 3" is not correct. Like in Rule 56a(4) EPC, it would have been better to use a formulation in Rule 56a(6) EPC like (emphasis added) "within the applicable period under paragraph 3". the European patent application pursuant to Rule 56a(6) EPC will be re-dated to the date on which the correct application documents or parts were filed. In addition, the filing of the erroneously filed application documents or parts will be deemed not to have been made.The EPO will inform the applicant accordingly (Rule 56a(6), last sentence, EPC).

Like under current Rule 56(4) and (6) EPC, in cases where the date of filing has been shifted, the applicant may withdraw the correct application documents in order to maintain the initial date of filing (Rule 56a(5) and (7) EPC).Rule 56a(5) EPC also applies to the situation where the applicant fails to file the correct application documents or parts within the period under Rule 56a(1) or (3).In each of the situations in Rule 56a(5) EPC, (6) and (7) EPC, the EPO will inform the applicant on the outcome of the request to withdraw the correct application documents (or parts) or the re-dating of the application.

Last but not least, a new provision has been inserted into Rule 56a EPC relating to the search of the European patent application. If the applicant files correct application documents or parts under Rule 56a(3) or (4) after the EPO has already begun to draw up the search report, the EPO will invite the applicant pursuant to new Rule 56a(8) EPC to pay a further search fee within a non-extendable period of one month.In Rules relating to Fees Art. 2(1), item 2, a reference to Rule 56a(8) EPC has been added (effective 01.11.2022). If the search fee is not paid in due time, the application will be deemed to be withdrawn (Rule 56a(8), last sentence, EPC).This is similar to the provision in PCT Rule 40bis, where the International Searching Authority (ISA) may request the applicant to pay an additional (search) fee if a missing part of a correct element or part is filed after the ISA has begun to draw up the international search report. Also see the reference to PCT Rule 40bis in Rules relating to Fees Art. 2(1), item 2. Note that a corresponding invitation to pay a further search fee has not been included in Rule 56 EPC.The same applies where an applicant files missing parts or elements pursuant to PCT Rule 20.5. Although asking for a further (search) fee under PCT Rule 40bis applies to both the situations of PCT Rule 20.5 and 20.5bis, the EPO acting as ISA has chosen to ask for an additional (search) fee only in the situation where the applicant files correct elements or parts under PCT Rule 20.5bis, but not when the applicant files missing parts or elements under PCT Rule 20.5. This can be inferred from Art. 2(1), item 2 of the Rules relating to Fees where reference is made to PCT Rule 20.5bis but not to PCT Rule 20.5. Also see OJ EPO 2020 A36 and A81.

The originally proposed version of Rule 56a(8) EPC included the wording (emphasis added): "... the European Patent Office may invite the applicant to pay a further search fee ....". In the final version of the Rule, this was changed into (emphasis added): "the European Patent Office shall invite the applicant to pay a further search fee ...".Note that PCT Rule 40bis.1 it is written (emphasis added): "The International Searching Authority may invite the applicant to pay additional fees where the fact that a missing part or a correct element or part ... is notified to that Authority only after it has begun to draw up the international search report." As far as we are aware, no reduction schemes have been discussed in case the final search could benefit in part or in full from the search that was already underway. Charging a full further search fee if only a small change resulted from "late" correction seems disproportional.

Rule 56a EPC will enter into force on 1 November 2022.See OJ EPO 2022, A3, Art. 3. Similar to Rule 56 EPC, further processing is excluded for the periods in Rule 56a EPC,See OJ EPO 2022, A3, Art. 1(3): Amendment of Rule 135(3) EPC ruling out the periods in Rule 56a(1) and (3)-(7) EPC from further processing. with the exception of Rule 56a(8) EPC.If the time limit for paying the further search fee under Rule 56a(8) EPC is missed, further processing is available (not ruled out in Rule 135(3) EPC).

Following the entry into force of new Rule 56a EPC on 1 November 2022, the incompatibility of PCT Rule 20.5bis with the EPC legal framework will cease. Note, however, that in the period between 1 July 2020 and 31 October 2022, international applications relying on incorporation by reference by the receiving Office under Rule 20.5bis(d) PCT, i.e. without changing the filing date, will not be effective before the EPO. For international applications filed on or after 1 November 2022, the EPO as receiving Office will start processing requests for incorporation by reference of the correct element or part under PCT Rule 20.5bis(d).OJ EPO 2022, A71, item 23. If the requirements are fulfilled,PCT Rules 20.6(b) and 4.18. the correct element or part will be considered to have been contained in the purported international application on the date on which one or more elements referred to in PCT Article 11(1)(iii) were first received by the receiving Office without shifting the international filing date. It is noted that in this case the wrong element or part will also remain in the application.

Amendment of Rule 56 EPC

The requirements set out in Art. 5(6) PLTAlso see Rule 2(3) and (4) PLT. have to a large extent been taken over in Rule 56 EPC, allowing an applicant to include a missing part of the description or missing drawings after filing a European patent application. After receipt of the application, the EPO will first examine whether the application is entitled to a date of filing in accordance with Rule 40 EPC. If during this check, the EPO notes that a part or parts of the description or that drawings are or appear to be missing, the applicant will be invited to file the missing items within a non-extendable period of two months from the invitation (Rule 56(1) EPC).If the applicant does not reply to the invitation of the EPO in due time, all references to the missing items are deemed to be deleted (Rule 56(4)(a) EPC).The last sentence of Rule 56(1) EPC stipulates that the applicant may not invoke the omission of a communication from the EPO under Rule 56(1) EPC.

According to Rule 56(2) EPC, the applicant may also file missing parts of the description or file missing drawings of own motion.The missing parts may be filed within a non-extendable period of two months of the date of filing (Rule 56(2) EPC). If the applicant files a missing part of the description or a missing drawing of own motion or upon invitation of the EPO, the application will normally be re-dated to the date on which the missing item is received by the EPO.If re-dating is undesirable, e.g., in view of priority, the applicant can retract the effect of the re-dating by withdrawing the missing item(s) within one month from the communication of Rule 56(2) or (5) EPC, in which case the re-dating is deemed not to have occurred (Rule 56(6) EPC). This can also be effected when later the examining division concludes that the missing parts are not "completely contained" in the priority document, contrary to the original finding of the Receiving Section (see GL/EPO (2022) C-III 1.1.1).

Under the amendment of Rule 56 EPC, a reference to the EPO issuing a communication under Rule 56a(1) EPC has been added to Rule 56(2) EPC.OJ EPO 2022, A71, item 7. This allows an applicant to file missing parts or correct application documents following either invitation of the EPO.

Rule 56(3) EPC allows an applicant to file missing parts of the description or missing drawings without loss of the date of filing initially accorded by the EPO. Re‑dating is avoided if the missing items are completely contained in an application from which priority is claimed.

Note that the wording of Rule 56(3) EPC (emphasis added) "within the period under paragraph 2" is not correct. Due to the addition in Rule 56(2) EPC to an invitation from the EPO under Rule 56a(1) EPC, there are now two (concurrent) periods that may be applicable:

1. two months from an invitation from the EPO under Rule 56(1) EPC, and/or
2. two months from an invitation from the EPO under Rule 56a(1) EPC.

In principle, there even is a third period running, i.e., when the applicant files missing parts of own volition, but this one normally expires first. Upon amending Rule 56(3) EPC, it would have been better to use a formulation like (emphasis added) "within the applicable period under paragraph 2".Note that the wording "within the period under paragraph 2" appears twice in Rule 56(3) EPC. A solution could be that the EPO in stead of issuing a communication under Rule 56 EPC and a separate communication under Rule 56a EPC (as the case may be), would issue a single communication combined for Rule 56 and 56a EPC. In that case, there would be "a period under paragraph 3" for the combined communication. It may be wise to clarify this in the Guidelines. Note that the same remark applies to Rule 56(4)(a) and 56(5) EPC: following the amendment of Rule 56(2) EPC, the word "applicable" should have been added where reference is made to "the period" in this provision.

The version of Rule 56 EPC as in force before 1 November 2022 specifies as one of the requirements for the completely contained criterion in Rule 56(3) EPC that "the application claims priority of an earlier application". This formulation does not specify when the application must claim priority in order to avoid the re-dating when filing a missing part of the description or a missing drawing. The requirements that should be met are clear from Art. 5(6)(b) PLT which stipulates that in order for a missing part of the description or a missing drawing to be retrieved from the priority application, the application:

"... at the date on which one or more elements ... were first received by the Office, claims the priority of an earlier application ..."

Although Rule 56(3) EPC does not specify when the priority must be claimed, the Guidelines could have specified that the priority of the earlier application must be claimed on the date on which the application was filed. However, the Guidelines allowed the applicant "to insert a new priority claim not present when the application was filed" with the proviso that "the priority claim in question must have been in existence no later than the filing" of the request under Rule 56(3) EPC.See GL/EPO (2022) A-II 5.4.1 (this applies to the version of Rule 56(3) EPC as in force until 1 November 2022).

Apart from deviating from a mandatory requirement in the PLT, this "leniency" in the Guidelines with respect to the later insertion of a priority claim carries the risk of a direct violation of Article 123(2) EPC providing that the European patent application may not be amended in such a way that it contains subject-matter which extends beyond the application as filed. This has been extensively discussed (with examples) in an article by one of the current authors in this Journal in 2010.Cees Mulder and Derk Visser: "Filing date requirements under the EPO - An option to extend subject-matter?" in epi Information 2|2010 pages 44 48.

Note that the PCT when allowing the filing of missing parts or missing elements in PCT Rule 20.5 or the correction of erroneously filed elements or parts in PCT Rule 20.5bis, also requires that the international application must claim priority "on the date on which one or more elements referred to in Article 11(1)(iii) were first received by the receiving Office".This requirement is enshrined in PCT Rule 4.18.

With the amendment of Rule 56 EPC, the ambiguity in Rule 56(3) EPC (as in force until 1 November 2022) has been repaired by stipulating in this paragraph that the priority claim must be made when the applicant files the European patent application (emphasis added):In Document 5/20 issued by SACEPO - Working Group on Rules (21.02.2020), it is mentioned that the addition is made "for the sake of legal certainty and following a request by users".

"If the missing parts of the description or missing drawings are filed within the period under paragraph 2, and the application claims priority of an earlier application on the date on which the requirements laid down in Rule 40, paragraph 1, were fulfilled, the date of filing shall, provided that the missing parts of the description or the missing drawings are completely contained in the earlier application, remain the date on which the requirements laid down in Rule 40, paragraph 1, were fulfilled, where the applicant so requests and files, within the period under paragraph 2: ..."

This amendment means that Rule 56(3) EPC as in force from 1 November 2022 explicitly provides that it is no longer possible to add the claim to priority after the initial date of filing, e.g. together with the request to add a missing part of the description or a missing drawing.

Rule 56(2) and (3) EPC as amended will enter into force on 1 November 2022.See OJ EPO 2022, A3, Art. 3. Adding a provision to Rule 56 EPC similar to Rule 56a(8) EPC (invitation to pay a further search fee) was not regarded necessary, because under Rule 56 EPC, missing claims cannot be added (see the discussion below).

Discussion

The introduction of Rule 56a EPC is not only aimed at aligning the EPO's practice with that of the PCT, but also the result of users of the European patent system desiring to have a safety net for the rare case where an error was made when filing an application, such as when a set of claims foreseen for a different application was erroneously filed. New Rule 56a EPC allows the correction of erroneously filed application documents in the initial phase of the patent grant procedure. The introduction of Rule 56a EPC brings the EPO in a position to withdraw its reservation under PCT Rule 20.5bis and fully apply the PCT procedure as receiving Office and as designated/elected Office.See "Withdrawal of Notification of Incompatibility of Certain PCT Rules with National Laws - European Patent Office" in PCT Newsletter No. 07-08/2022.
See https://www.wipo.int/edocs/pctndocs/en/2022/pct_news_2022_7_8.pdf (accessed 25.08.2022)

Rule 56 EPC and 56a EPC will only be used in rare cases but when it happens it is good that applicants can add a missing part of the description or a missing drawing, or can correct erroneously filed application documents or parts thereof.

According to statistics, Rule 56 EPC is rarely used by the EPO and the applicants.Private communication with the EPO. In the last four years, an average of 50 requests under Rule 56 EPC were received per year (< 0.1% of the total number of filed direct European patent applications). It is expected that the use of Rule 56a EPC will be on a similar level. With regard to the statistics on the use of corresponding PCT Rule 20.5bis, the International Bureau (IB) of WIPO recorded approx. 120 cases since the entry into force of the Rule on 1 July 2020.Private communication with the International Bureau of WIPO.

About 70 cases related to removal/correction of erroneously filed elements and parts and about 50 cases to the incorporation of erroneously filed elements and parts. With respect to the number of cases where the applicant will be invited to pay a further search fee (Rule 56a(8) EPC), it is expected that this will happen in less than 10% of the requests under Rule 56a EPC.

The whole purpose of introducing Rule 56a EPC and amending Rule 56 EPC as described in SACEPO WPR Document 5/20"Draft Rule 56a EPC regarding correction of erroneous filings", Document 5/20 issued by SACEPO - Working Group on Rules (21.02.2020). is "to align the EPC with the new PCT provision (see the propose wording of Rule 56 and Rule 56a EPC". However, the alignment with the PCT was not extended to allow the filing of "missing claims" as missing parts under Rule 56 EPC. The filing of missing claims is allowed under corresponding PCT Rule 20.3 (all claims missing) and Rule 20.5 (missing part of the claims).

The argument that Rule 56 EPC is related to Rule 40 EPC, implementing Art. 80 EPC, and claims are not mandatory for according a date of filing, is true but then it is strange that the applicant can also file missing drawings under Rule 56 EPC whereas drawings are (also) not a requirement for the accordance of a date of filing. It seems incongruous that Rule 56a EPC, also implementing Rule 40 EPC, allows the correction of an erroneously filed set of claims. On the other hand, one may argue that Art. 5(6) PLT only addresses the topic of where "a missing part of the description or a missing drawing is filed" and "hence" there is no need to allow for the filing of missing claims under Rule 56 EPC. However, the vast majority of applicants files European patent applications together with a set of claims because when claims are filed after the date of filing, they must have a basis in the application as filed.Art. 123(2) EPC. See e.g., GL/EPO (2022) A-III 15, B-XI 2.2, C-III 1.1.2 and H-IV 2.2.3. Furthermore, the preparatory documents emphasise even stronger the wish for alignment with the PCTDocument CA 4/21 (President EPO; 07.09.2021) items 6, 14 and 34 for new Rule 56a EPC; CA 4/21 items 17 and 35 for the amendment to Rule 56 EPC. (rather than just with the PLT), but Rule 56 EPC fails to achieve that alignment in relation to the claims. We also observed that the preparatory documents for new Rule 56a EPC repeatedly provide that "The application documents, namely the description, drawings and claims, as filed on the date of filing establish the disclosure of a European patent application"Document CA 4/21 (President EPO; 07.09.2021) item 8; OJ EPO 2022,A71, item 6. and that "The application with the disclosure determined under proposed Rule 56a EPC would be considered the application as filed and would form the basis for any amendments under Article 123(2) EPC".Document CA 4/21 (President EPO; 07.09.2021) item 18. That this importance of the claims is reflected in the new provision for erroneous/corrected claims but not in those for missing claims is hard to understand.

If Rule 56a(4) EPC is used, the correct documents will be added to the application as filed and the erroneously filed application documents will remain in the application as filed, as in PCT Rule 20.5bis(d). However, the reason for PCT Rule 20.5bis(d) to keep both versions lies in the incompatibility with some national law/reservations of designated Offices: it aims to allow, after incorporation by the rO, to proceed with the relevant version in the national phases of Offices without and with reservations.Document PCT/WG/12/9 Comments on page 11 (comment to Rule 20.5bis(d)). In the EPC, there is no such phase, no reservations, and no need for keeping two versions of the application documents "active". Therefore, in our view, Rule 56a(4) EPC should be amended to provide that the correct part replaces the erroneously filed part, as in Rule 56a(3) EPC, so that there is also no need for any amendment to delete the erroneous part in Rule 56a(4) EPC, as there is not in Rule 56a(3) EPC.

Further, after using Rule 56a(4) EPC the erroneously filed application documents have to be removed by amending the application during the proceedings up to grant, the amendment being subject to the standard high bar of Art. 123(2) EPC.OJ EPO 2022, A71, item 6. Hence, Rule 56a(4) EPC specifies that the erroneous documents and the corrected documents together form the application as filed (in case of correction without a change of the date of filing in the "completely contained" situation), which is different from Rule 56a(3) EPC where the correction is done with a change of the date of filing and where the erroneously filed application documents will be deemed not to have been filed.Rule 56a(3) EPC, OJ EPO 2022, A71, item 9. However, the erroneous parts may be so erroneous that they cannot be "amended out" when they are considered to also be part of the application as filed. For example, consider a patent application relating to improvements to vehicles, such as cars. The erroneous description says, "in all embodiments of the invention, the vehicle is a car", whereas it should have read "in an embodiment of the invention, the vehicle is a car". In that case, the erroneous description, being part of the application as filed, would require to limit the whole application to cars, whereas the intention clearly was to cover all types of vehicles with cars just being one explicit embodiment. This cannot be the intention of filing corrected parts! Further, if both the erroneously filed documents and well as the correct documents are part of the application as filed, a divisional could be directed to the erroneous embodiments - which may, at least theoretically, happen to be also valid and even more preferred embodiments. (E.g., where the erroneous embodiment was a moped, and the corrected one was a motor, and where the applicant later finds that his invention would also work for a moped). In our view, Rule 56a(4) EPC should, as Rule 56a(3) EPC, specify that the erroneously filed application documents will be deemed not to have been filed and the correct documents will be added so as to replace the erroneously filed application documents, and the application as filed shall comprise the correct documents but not the erroneous ones.

New Rule 56a EPCNor any other amendment to the EPC Rules and RFees in OJ EPO 2022, A3. does not describe the effect of erroneous/corrected parts on the filing fee (especially the additional fee, often referred to as page fee) and the claims fees. We believe that clarification is necessary. For example, under R.56a(3) EPC the correct parts replace the erroneously filed parts, so that it may be assumed that any page fees and claims fees are based on the application documents after correction. However, the period for paying the page fees runs from the filing of the first set of claims,Rule 45(2), first sentence EPC. i.e., the erroneous claims, while this period for the corrected application documents expires later (2 months), so that the correction may be filed after the page fees were already paid (albeit for the erroneously filed documents). Under Rule 56a(4) EPC, the correct parts are added to the erroneously filed parts, so that it may be assumed that any page fees as well as claims fees are based on the erroneous and corrected application documents together. However, if the erroneously filed set of claims set would, for example, have 17 claims and the correct claim set 14, one would need to pay 17 + 14 - 15 = 16 claims fees,Rule 45(1) EPC. while only the 14 correct claims will in the end be maintained. Further, if no claims fees would be paid, all claims above 15 would be deemed to be abandoned,Rule 45(3) EPC. i.e., none of the correct claims would be part of the procedure. It may be doubted whether this is the intention of the new provisions.Note that GL/EPO (2022) A-III 9 provides: "If an application contains more than one set of claims, Rule 45 is only applicable for the set of claims containing the highest number of claims." If this would also apply to current Rule 56a(4) EPC situation, the situation above would require the application to pay 17 - 15 = 2 claims fees, which corresponds to the erroneously filed set of claims and not to the correct set. It may also be doubted whether this is the intention of the provision, as the erroneously filed set of claims will not be part of the procedure. Also, the same period complication as for Rule 56a(3) arises for Rule 56a(4) EPC.

The effect of erroneous/corrections on Rule 159 EPC, Rule 161(1)/162 EPC and Rule 161(2)/162 EPC is not addressed in new Rule 56a EPC,Nor any other amendment to the EPC Rules and RFees in OJ EPO 2022, A3. nor in the NoticeOJ EPO 2022, A71, item 21-23. clarifying its introduction.Nor in the former "Notice from the European Patent Office dated 14 June 2020 concerning the applicability of new PCT Rule 20.5bis on the correction of erroneous filings in proceedings before the EPO", OJ EPO 2020, A81, as the latter applied to the situation where the EPO as dO/eO had a reservation. Also note that under the old Notice, the EPO "will consider the application as filed to include the correct application documents but not the erroneously filed ones" (item 10). The entry procedure described therein largely relied on the incompatibility provisions of PCT Rule 20.8. In our interpretation, the applicant is likely expected to amend the Euro-PCT application by removing the erroneously filed part and to limit to the correct parts at entry under Rule 159(1)(b) EPC after a PCT Rule 20.5bis(d) situation. If not done at that time, it seems likely that the applicant will be invited thereto in the communication under Rule 161(1)/(2) EPC.

New Rule 56a EPCNor any other amendment to the EPC Rules and RFees in OJ EPO 2022, A3. does also not address the effect of erroneous/corrected parts on the Art. 54(3) "prior right" effect that the European patent application may provide against later filings. In our interpretation, Rule 56a(3) EPC suggests that only the correct documents will provide an Art. 54(3) effect, as the erroneously filed application documents will be deemed not to have been filed and the correct documents will be added to the application and considered to be part of the application as filed. This seems to be in line with the intention of the provision. However, Rule 56a(4) EPC suggests that the erroneously filed and the correct documents together will provide an Art.54(3) effect, as the correct application documents or parts are included in the application and the erroneously filed parts remain in the application as filed. So, it appears that both the erroneously filed and the correct application documents are considered to be part of the application as filed and, hence, provide the Art. 54(3) effect.GL/EPO (2022) G-IV 5.1: "It is important to note that it is the content of the earlier application as filed which is to be considered when applying Art. 54(3)." On the other hand, one could argue that the skilled person can directly and unambiguously derive that there is an error and what the correction should be when considering the complete application as filed, i.e. from the combined erroneously filed and correct application documents, so that the disclosure of the erroneously filed parts is not taken into account.Following the principles set out in GL/EPO (2022) G-IV 9 "Errors in prior-art documents". However, it may be doubted whether this applies if the erroneous disclosure is technically a sound disclosure and where the skilled person would need to take secondary, non-technical indications into account, i.e., when the skilled person needs to consider the procedural aspects of PCT Rule 20.5bis(d) rather than mere technical knowledge.

Another issue with Rule 56a EPC is that it does not address the situation where under Rule 56a(4) EPC, the erroneously filed application documents are filed in one official EPO language and the correct application documents in another official EPO language: as both the application documents "remain" in the application, which filing will determine the language of the proceedings?Cf. Decision of the Enlarged Board of Appeal G 4/08, OJ EPO 2010, pp. 572-597.

A question that can be asked, do Rule 56 and Rule 56a EPC also apply when filing a divisional application? It could apply to the situation where a divisional application has been filed, but a page of the description is missing or the wrong drawing(s) have been filed, and where this missing or correct part is present in the direct parent application. Under the current formulation of Rule 56/56a EPC, this cannot be done, because the parent application is not the priority application.A solution could be to introduce Rule 56b EPC specifying that Rules 56 and 56a EPC apply mutatis mutandis to divisional applications with the proviso that "the date of filing" is replaced by "the date on which the divisional application is filed" and references to claiming priority from an earlier application as well as to Rule 40(1) EPC are deleted. The missing parts or the correct application documents should be completely contained in the (immediate) parent application. Filing a copy and/or a translation of the parent application as required by Rule 56(3) and Rule 56a(4) EPC are not necessary.

An important issue when filing correct application documents under Rule 56a EPC is that even if the erroneously filed application documents are withdrawn under Rule 56a(5) or (7) EPC (e.g. to maintain the priority claim), these erroneously filed application documents are part of the file, irrespective of whether or not they are considered to form part of the application as filed. As such they will be open to file inspection from publication of the application.Art. 128(4) and Rule 144 EPC. Upon a reasoned request of the applicant, erroneously filed documents which are not considered to form part of the application as filed may be excluded from file inspection.Decision of the President of the EPO dated 12 July 2007, Special edition No. 3, OJ EPO 2007, J.3.

Conclusion

On 1 November 2022, Rule 56a EPC will be inserted into the EPC allowing the correction of erroneously filed application documents or parts thereof. Rule 56a EPC corresponds to a similar provision in PCT Rule 20.5bis which entered into force on 1 July 2020.

Also on 1 November 2022, Rule 56(3) EPC will be amended improving the alignment with the requirements of the Patent Law Treaty and those of the PCT. Both Rules require that in order to retain the initially accorded date of filing due to the filing of missing parts or correct application documents being "completely contained" in the earlier application, priority must have been claimed from this earlier application on the initial date of filing of the application. With the amendment of Rule 56 EPC and the introduction of Rule 56a EPC, the situation will be less flexible for applicants because priority may no longer be added e.g. when missing parts or correct application documents are filed. Rule 56 and 56a EPC emphasise the importance of declaring priority of any relevant earlier applications on the initial date of filing.

In its striving to improve alignment of the EPO's practice with the PCT, it is a missed opportunity not to allow an applicant under Rule 56 EPC to also file missing claims so that those can become part of the application as filed. There is no logic in allowing the correction of erroneously filed claims under Rule 56a EPC whereas filing of missing claims is not allowed under Rule 56 EPC.

Last but not least, upon amending Rule 56 EPC and inserting Rule 56a EPC, some inconsistent wording has been introduced in both Rules and the effect on some other aspects (e.g. calculation of page fees and claims fees, language of the proceedings, effect of Art. 54(3) EPC and Euro-PCT applications) are missing. It is suggested to clarify these ambiguities and unclarities in the Guidelines.And, preferably, in a further Notice of the EPO as such Notices can be published before the entry into force of the new provisions on 1 November 2022, whereas the Guidelines are only updated one every year, i.e., at the earliest per 1 March 2023.

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