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

C. Mulder (NL)

R. van Woudenberg (NL)

On 1 November 2022, Rule 56a EPC was inserted into the EPC. This Rule allows the correction of erroneously filed application documents or parts thereof. Rule 56a EPC corresponds to a similar provision in PCT Rule 20.5bis. At the same date, Rule 56(3) EPC was amended to require that priority must already be claimed on the initially accorded date of filing in order to maintain the date of filing.

In a previous article, some flaws were noted in new Rule 56a EPC and amended Rule 56 EPC. In addition, the manner in which Rule 56a EPC was implemented in the Guidelines was criticised.

In the current article, further comments are given on Rule 56a and 56 EPC, as well as on PCT Rule 20.5bis, and some strange consequences of the Rules in proceedings before the EPO are shown.

A proposal for amending Rule 56a and Rule 56 EPC is presented in an Annex.

### Introduction Suppose you have filed a European patent application without a set of claims while claiming priority of an earlier national application containing a set of claims. Can you now later on file a set of claims without a loss of the initial date of filing? Under current Rule 56a EPC, the answer seems to be ‘yes’. How would this work? One of the problems with the amendment of Rule 56 EPC is that the Rule only relates to filing missing parts of the description and filing missing drawings.1 Although the EPO stipulated that the amendment of Rule 56 EPC and the insertion of Rule 56a EPC was done “in alignment with the PCT procedure”,2 3 the EPO did not or forgot to add the filing of missing claims into Rule 56 EPC.4 So, unfortunately, we cannot add a missing set of claims under Rule 56 EPC. But can we do it under Rule 56a EPC without losing the original date of filing? Yes, this appears to be possible. However, a small trick has to be applied. You have to file a claim (preferably unrelated to the invention in the EP application).5 As we know, any late-filed claim (or claims) must have a basis in the application documents (description and any drawings) provided on the date of filing (Art. 123(2) EPC).6 However, we need not bother about this requirement, because we are going to “correct” this late-filed claim. This “correction” is effected by filing a request to correct the application documents under Rule 56a(4) EPC, based on the priority application, in particular to correct the erroneously filed claim.7 To this end, the (correct) set of claims in the priority document has to be filed within two months of the original date of filing of the EP application. In addition, all further requirements in Rule 56a(4) EPC must be fulfilled, which are listed in the 2023 Guidelines.8 As the original EP application claims priority on the initial date of filing, it should be requested to base the correct application documents on the claimed priority in order to avoid a change in the date of filing. Where applicable, a copy of the priority application has to be filed. As the set of claims in the priority document is used to correct the erroneously filed European patent application, the “completely contained” criterion is fulfilled. Where the conditions for including the correct application documents (or parts) under Rule 56a(4) EPC are fulfilled, the date of filing remains unchanged.9 The correct application documents (or parts) are included in the application and the erroneously filed documents remain in the application as filed.10 The EPO will inform the applicants about this in a communication under Rule 56a(4) EPC.11 The erroneously filed documents may only be removed by amending the application during the grant proceedings and subject to Art. 123(2) EPC.12 This latter requirement will not be a problem if the “erroneous” claim is unrelated to the invention in our EP application. Another advantage of this manner of acting is that even if the number of claims in the set of claims as corrected is above 15, no claims fees need be paid. This is because, the EPO did not amend Rule 45 EPC when inserting Rule 56a EPC. Rule 45(2) EPC refers to “the first set of claims” and this requirement is retained in the 2023 Guidelines for filing a correct set of claims. In the Guidelines, it is written: *“Where correct claims are filed under Rule 56a(3) or (4) (see A-II, 6), the claims fee is calculated on the basis of the set of claims first filed”.*13 This implies that the claims fees are (always) calculated on the basis of the erroneously filed claims. Note the advantage that, even if the number of claims in the set of claims as corrected is above 15, payment of claims fees can also be avoided without using late-filed claims. One can avoid the payment of any claims fees if one accepts a one-day delay in the date of filing of a new European application14. Hereto, one first files a national application NL-0 containing a large set of claims or a European application EP-0 containing the large set of claims without paying any fees, whereby EP-0 becomes deemed to be withdrawn but can still serve as a valid priority application.15 Then, you file a European patent application EP-1 with a single, non-related claim while claiming priority of the earlier national application NL-0 or the earlier European application EP-0 containing the large set of claims. Subsequently, you file a request for including the correct, large set of claims from the priority document under Rule 56a(4) EPC so as to keep the date of filing unchanged, while including the large set of claims without the need to pay any claims fees. In the current article, the legal basis for the application of Rule 56a EPC in the above-described circumstance is given. In addition, the implementation of Rule 56a EPC in the 2023 Guidelines is reviewed. In Annex 1 to this article, proposals for amended versions of Rule 56a and Rule 56 EPC are presented. ### A brief history of Rule 56a EPC On 1 July 2020, PCT Rule 20.5bis was inserted into the Regulations under the PCT .16 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 – under limited circumstances – to replace any erroneously filed claims and/or the description of the application (or parts thereof), or any erroneously filed drawings with the equivalent “correct” version of the claims, the description or the drawings (or parts thereof) as contained in the priority application.17 Current Rule 56a EPC aims at aligning the practice under the EPC with PCT Rule 20.5bis.18 The Rule is constructed in the same way as current Rule 56 EPC but includes additional provisions, 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 parts thereof), appear to have been filed erroneously (i.e. unintentionally19) the applicant will be invited pursuant to Rule 56a(1) EPC20 to file the correct document (or parts thereof).21 22 A request for correction must be filed within two months of that invitation.23 Under current Rule 56a(2) EPC a provision was added that formalises the EPO’s practice with regard to corrections of application documents received on the date of filing.24 It allows the correction and exchange of application documents before or on the date of filing without changing the date of filing. Current 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.25 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.26 Note that when filing correct application documents under Rule 56a(2) EPC, the erroneously filed application document are “deemed not to have been filed”.27 The insertion of Rule 56a(2) into the EPC seems to be rather superfluous, because in the EPC it is hardly possible to miss the accordance of a date of filing.28 The equivalent provision in PCT Rule 20.5bis(b) makes more sense, because the requirements for obtaining an international filing date are more severe under the PCT and one does, e.g., not obtain an international filing date for a PCT application as long as no claim has been filed.29 Thus, in practice, Rule 56a(2) EPC will probably only be used to replace an erroneously filed description by a correct one on the date of filing itself (e.g., where one realizes to have filed an earlier draft version of the description), or to replace an erroneously filed set of claims or drawings on the date of filing itself. In Annex 1 a proposal for an amended version of Rule 56a EPC is presented where current Rule 56a(2) EPC has been deleted.30 Current Rule 56a(3) EPC allows an applicant to correct of own volition the description, claims and drawings (or parts thereof) after the accordance of the date of filing, if they were filed “erroneously”.31 The erroneously filed application documents will be deemed not to have been filed,32 and the correct documents will be included in the application, i.e., in the application as filed. 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 the loss of the right of priority. The requirements for meeting the “completely contained” criterion in Rule 56(3) EPC have been taken over in current Rule 56a(4) EPC.33 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.34 The erroneously filed application documents will remain in the European patent application and may only be removed by amending the application during proceedings up to grant.35 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.36 If the applicant fails to file the correct application documents (or parts) “within the period under paragraph 3”, any – too late – filing of correct application documents (or parts) will be deemed not to have been made (Rule 56a(5)(a) EPC).37 In addition, the erroneously filed application documents (or parts) will remain in the application.38 The European patent application will thus proceed as originally filed, with the erroneously filed application documents (or parts) but without the correct application documents (or parts). If the applicant fails to comply with the further requirements referred to in current Rule 56a(4) EPC39 within the applicable period,40 the European patent application pursuant to current 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.41 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 (current Rule 56a(5) and (7) EPC).42 43 44 In that case, the European patent application will proceed as originally filed, with the erroneously filed application documents (or parts) and without the correct application documents (or parts). Last but not least, on its introduction, a new provision was 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 Rule 56a(8) EPC to pay a further search fee within a non-extendable period of one month.45 46 Note that a corresponding invitation to pay a further search fee was not present, and has also not been included, in Rule 56 EPC.47 Presumably, this is caused by the fact that Rule 56 EPC does not allow the late-filing of missing claims and because the effect of added pages to the description were considered to not significantly affect the claimed subject-matter.48 Following the entry into force of Rule 56a EPC on 1 November 2022, the incompatibility of PCT Rule 20.5bis with the EPC legal framework has ceased.49. For international applications filed on or after 1 November 2022, the EPO as receiving Office will process requests for incorporation by reference of the correct element (complete description, complete set of claims) or part (part of the description, part of the set of claims, some or all of the drawings ) under PCT Rule 20.5bis(d).50 If the requirements are fulfilled,51 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 Art. 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) PLT52 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).53 54 According to Rule 56(2) EPC, the applicant may also file missing parts of the description or file missing drawings of own motion.55 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.56 Under the amendment of Rule 56 EPC, a reference to the EPO issuing a communication under Rule 56a(1) EPC was added to Rule 56(2) EPC.57 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. Redating 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 two (concurrent) periods that may be applicable. 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”.58 As a solution the EPO has decided that in stead of issuing a communication under Rule 56(1) EPC and a separate communication under Rule 56a(1) EPC (as the case may be), to issue a single communication combined for Rule 56(1) and 56a(1) EPC.59 60 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 did 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 stipulating 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 …” 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”.61 With the amendment of Rule 56 EPC, the ambiguity in Rule 56(3) EPC was repaired by stipulating that the priority claim must be made when the applicant files the European patent application.62 This implies that Rule 56(3) EPC as in force from 1 November 2022 no longer allows adding a priority claim after the initial date of filing.63 ### Procedural flaws in Rule 56a and Rule 56 EPC 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. Rule 56a EPC allows the correction of erroneously filed application documents in the initial phase of the patent grant procedure. The purpose of introducing Rule 56a EPC and amending Rule 56 EPC as described in SACEPO WPR Document 5/2064 is “to align the EPC with the new PCT provision”. 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.65 Furthermore, the preparatory documents emphasise even stronger the wish for alignment with the PCT66 (rather than just with the PLT), but Rule 56 EPC fails to achieve that alignment in relation to missing claims. It is also observed that the preparatory documents for 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”,67 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”.68 That this importance of the claims is reflected in the new provision for erroneous/corrected claims but not in in the case of missing claims is difficult to understand. In Annex 1 a proposal for an amended version of Rule 56 EPC is presented providing that an applicant can also file missing claims.69 This promotes alignment with the PCT. If current 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:70 it aims to allow, after incorporation by the receiving Office, to proceed with the relevant version in the national phases of Offices without and with reservations.71 In the EPC, there is no such “phase”, there are no “reservations” and, hence, there is 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, similar to 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 no such requirement 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.72 Hence, current Rule 56a(4) EPC specifies that the erroneous documents and the correct 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.73 However, the erroneous parts may be so similar to the correct parts, that they cannot be “amended out” when they are considered also to 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 correct parts! Further, if both the erroneously filed documents as 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 correct 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.74 ### Filing of a missing set of claims while keeping the original date of filing In the example as described in the Introduction, it was shown how one can start with a European patent application without claims and how later on a set of claims can be filed without losing the original date of filing while avoiding problems with Art. 123(2) EPC. Of course, this was not the intention of Rule 56a(4) EPC, but the current formulation of the Rule seems to allow this. The reason that this is possible is because Rule 56a(1) EPC defines “application documents” as being the description, claims or drawings without referring to the date on which day are filed, and neither do Rule 56a(2), (3) and (4) EPC when referring to “the erroneously filed application documents”. Only for “the correct application documents or parts” the mentioned paragraphs relate the date on which these documents are filed, to the date of filing75, by indicating that they are filed before or on (Rule 56a(2) EPC) or later than (Rule 56a(3) and (4) EPC) the date of filing. Further, claims may be filed later,76 77 so as to complete the application documents as the latter are defined in Art. 78(1)(c) EPC after the date of filing (but subject to Art. 123(2) EPC). ### Effect of Rule 56a EPC on fees on filing Rule 56a EPC78 does not describe the effect of erroneous/correct parts on the filing fee (especially the additional fee, often referred to as ‘page fee’), and also not on the claims fees. We believe that clarification is necessary. For example, under Rule 56a(3) EPC the correct parts replace the erroneously filed parts, so that one could expect 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,79 i.e., the erroneous claims, while this period for filing the correct 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). The 2023 edition of the Guidelines confirms that,80 where correct application documents are filed under Rule 56a EPC, the page fee is calculated on the basis of the documents present at expiry of the period under Rule 38(3) EPC; hence, the page fee may be based on the erroneous documents – which are, under Rule 56a(2) and (3) EPC deemed not to have been filed – while the further procedure will be based on the correct documents. This is undesired as it may result in the applicant paying for more pages than the ones in the application after correction if the number of pages was initially higher, or in the EPO receiving a page fee for less than the pages in the application and used for search and examination if the number of pages was initially lower. Under Rule 56a(4) EPC, the correct parts are added to the erroneously filed parts. One could expect that any page fees as well as any claims fees are based on the erroneous and correct application documents together. Unfortunately, the 2023 edition of the Guidelines do not give clear guidance, as they only indicate that81, where correct application documents are filed under Rule 56a(4) EPC, the page fee is calculated on the basis of the documents present at expiry of the period under Rule 38(3) EPC. However, the Guidelines do not indicate whether the documents present at expiry of the period under Rule 38(3) EPC are meant to include both erroneous as well as correct application documents, assuming that the latter were filed before the expiry of the period under Rule 38(3) EPC82, or only the correct ones; the wording of Rule 56a(4) EPC suggests both. However, when the correct application documents are filed after expiry of the period under Rule 38(3) EPC, the page fee would just be based on the erroneous documents only. It may be doubted whether this strange asymmetry was intentional and whether it is acceptable. In Annex 2 a proposal for an amended version of Rule 38(2) and (3) EPC is presented clarifying the above mentioned disadvantage.83 As to claims fees, the 2023 edition of the Guidelines indicates that, where correct claims are filed under Rule 56a(3) or (4) EPC, the claims fee is calculated on the basis of the set of claims first filed.84 Thus, in a first example under Rule 56a(3) or (4) EPC, an erroneously filed set of claims set has 27 claims and the correct claim set has 14 claims, so that one would need to pay 27 – 15 = 12 claims fees,85 while less than 15 (only the 14 correct) claims will be maintained. However, if no claims fees would be paid, all claims above 15 would be deemed to be abandoned,86 i.e., none of the correct claims would be abandoned. It may be doubted whether this is the intention of the new provisions, especially in case of Rule 56a(3) EPC where the erroneously filed application documents or parts – i.e., these 27 claims – are deemed not to have been filed, so that one would expect the claims fees to be based on the correct set of 34. In a second example under Rule 56a(3) or (4) EPC, the erroneously filed set of claims set has 2 claims and the correct claim set 31, one would not need to pay any claims fees, while all 31 claims will be maintained. It may be doubted whether this is the intention of the new provisions, especially in case of Rule 56a(3) EPC where the erroneously filed application documents or parts – i.e., these 2 claims – are deemed not to have been filed so that one would expect the claims fees to be based on the correct set of 31 claims. In our opinion, Rule 45 EPC should be amended to accommodate claims fee in the situation of Rule 56a(3) and (4) EPC, so that the claims fees are calculated on the basis of the set of claims that truly form the basis of the proceedings (and that will be searched), i.e., the correct set of claims, provided that this set is filed within two months of the date of filing or, within two months from a communication under Rule 56a(1) or 56(1) EPC and the other requirements of Rule 56a(3) or (4) EPC are fulfilled. In Annex 2 a proposal for an amended version of Rule 45(2) EPC is presented clarifying the above mentioned disadvantage.87 ### Effect of correcting erroneously filed application documents under PCT Rule 20.5bis(d) and entry before the EPO as designated Office The effect of erroneous/corrections on Rule 159 EPC, Rule 161(1)/162 EPC and Rule 161(2)/162 EPC is not addressed in Rule 56a EPC,88 nor in the Notice89 clarifying its introduction.90 Also the Guidelines do not provide clear guidance; the Guidelines rather indicate that “On entry into the European phase, the normal procedures apply on the basis that the correct and erroneously filed parts are thus part of the application as filed (see E-IX, 2)”.91 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 documents upon entry under Rule 159(1)(b) EPC following a PCT Rule 20.5bis(d) situation. If not done upon entry, it seems likely that the applicant will be invited thereto in the communication under Rule 161(1)/(2) EPC. Further, if the entry documents contain non-searched matter at the end of the period under Rule 161/162 EPC, the EPO will issue a communication under Rule 164(1) or Rule 164(2) EPC, and during the related searches possibly a communication under Rule 62a EPC (multiple independent claims) or Rule 63 EPC (no meaningful search). In Annex 2 an amended version of Rule 159(1)(b) EPC is presented clarifying the above-mentioned situation.92 Even though it seems reasonable to expect that the applicant wishes to remove the erroneously filed documents and to limit the Euro-PCT application to the correct documents, there is nothing in the provisions that requires the applicant to do so. On the contrary, as both the erroneously filed and the correct documents are considered to be part of the application as filed under PCT Rule 20.5bis(d) (as well as in current Rule 56a(4) EPC), the applicant may still choose93 at this moment with which documents to proceed: the applicant can, as long as Art. 123(2) EPC is satisfied, limit the application to just the erroneous or just the correct documents. In the below, we assume that the applicant wishes to proceed with the Euro-PCT application including the correct documents. If the applicant amends the Euro-PCT application to only contain the correct documents at entry, i.e. before or on expiry of the period in Rule 159(1) EPC or at the date of early entry, page fees are calculated on the basis of the correct documents.94 However, if the applicant amends at a later moment, e.g., within the Rule 161/162 period, page fees will be calculated on the basis of the total of the erroneous and correct documents, i.e., the complete international publication.95 Non-payment of the page fees will result in the Euro-PCT application being deemed to be withdrawn (with further processing as a remedy for 50% extra fee). Thus, timely amending may be necessary to avoid the need to pay “unnecessary” page fees, even if the erroneous documents (or parts) are not at all related to the invention and the correct documents (or parts) relate to the invention. After entry, the applicant will receive an invitation under Rule 161/162 to file amendments, irrespective of whether amendments have already been filed or not. The application documents at the end of that period will serve as the basis for the further proceedings. The application documents at the end of the Rule 161/162 period determine the number of claim fees. If both erroneous and correct claims are present, claims fees need to be paid for the sum of both sets. So, if, for example, an erroneous set of 34 claims was filed and a correct set of 12, a total number of 34 + 12 – 15 = 31 claims fees must be paid. Claims over 15 for which no claim fees are paid are deemed abandoned. This leads to the strange effect that, if the erroneous set is the first set in the international publication and no amendments were filed, 19 erroneous claims plus all correct claims are deemed to be abandoned. If the application documents at the end of the period under Rule 161/162 EPC period only comprise the correct document and parts, the Euro-PCT application will proceed as a “normal” application, with the proviso that the EPO will check whether the requirements of PCT Rule 20.5bis(d) (corresponding to those in Rule 56a(4) EPC) have been complied with, in particular the “completely-contained” criterion.96 ### The EPO did not act as ISA nor as SISA If the EPO neither acted as ISA nor as SISA in the international phase, the Euro-PCT application will go the search division. If both erroneous and correct claims are present, the search examiner will likely issue a communication under Rule 62a, 63, or 164(1) EPC, depending on the subject-matter of the claims. The search examiner will probably also object to the presence of two claim sets, and multiple claims numbered “1”, “2”, etc. If both erroneous and correct parts of the description are present, the search examiner will probably also issue a clarity objection.97 If erroneous and correct claims relate to the same main invention, with different dependent claims, an invitation under Rule 62a EPC seems most likely. In that case, the applicant first receives an invitation which of the claims are to be searched before the examiner searches the indicated claims. The applicant may then indicate the correct set of claims, and later – after receipt of the search report – amend the application to delete the erroneous claims, within the limits of Art. 123(2) EPC. If erroneous and correct claims relate to different inventions, an invitation under Rule 64 EPC will probably be issued. In that case, the applicant first receives a partial search report directed to the first invention with an invitation to pay a further search fee to also search the second invention. If paid, the examiner will also search the second invention. The search report will then be established for both inventions and the applicant can later – after receipt of the search report – amend the application to delete the one set of claims and, if desired, file a divisional application for the other set. So, if the first invention relates to the erroneous claims and the second to the correct claims, the applicant may amend the application by deleting the erroneous claims, within the limits of Art. 123(2) EPC, and proceed with the correct claims. The strange situation may arise if the first invention is the erroneous invention and the applicant does not pay the further search fee, e.g., because the applicant does not wish to pay it because he/she considers to have corrected the initially erroneous filing such that he/she may legitimately expect that the rest of the procedure will be based on the correct claims or that he/she would at least have been invited to indicate which claims were to be searched before the search starts. In that case, the search report will only cover the first invention, defined by the erroneous set of claims, and the applicant can only proceed with the second invention, defined by the correct set of claims, via a divisional application. ### The EPO acted as ISA or SISA If the EPO acted as ISA (or as SISA) in the international phase, the Euro-PCT application will go directly to an examining division. The EPO as ISA will, usually, have established the international search report (ISR) and written opinion (WO-ISA) on the basis of the international application including the correct element(s) and/or part(s)98 and will have checked the “completely contained” criterion99. If both erroneous and correct claims are present, the examining division will likely issue a communication under Rule 164(2) EPC100 inviting the applicant to pay a further search fee for the erroneous claims, as the erroneous claims have not been searched by the EPO as ISA. Irrespective of the payment the examining division will require the applicant to restrict the application to a single invention in the next Rule 71(1) EPC communication. However, the situation is somewhat surprising if the EPO as ISA was notified of correct element(s) and/or part(s) only after the search has started but before its completion, the EPO as ISA had invited the applicant to pay an additional fee equal to the search fee within one month of the date of the invitation, and the applicant had duly paid the additional fee.101 As above, the official ISR and WO-ISA will be established on the basis of the international application including the correct element(s) and/or part(s). However, the EPO will also complete the already initiated search and issue a non-official ISR and WO-ISA based on the international application as initially submitted,102 i.e. based on the erroneous claims. One could now expect, as the erroneous claims were also searched, that the examining division will not issue a communication under Rule 164(2) EPC inviting the applicant to pay a further search fee for the erroneous claims. However, as the search report and written opinion established for the erroneous claims are only a non-official ISR and WO-ISA, issued only for the benefit of the applicant and any designated Office which have notified an incompatibility under Rule 20.8(b-bis) PCT, it appears that the Rule 164(2) EPC communication will nevertheless be issued. ### Amendments to remove the erroneously filed application documents or parts For a Euro-PCT application, the application as filed is the international application as originally filed. When PCT Rule 20.5bis(d) is correctly applied, the international application as filed encompasses both the erroneously filed documents or parts and the correct documents as filed.103 According to the OJ notices and the Guidelines, the erroneously filed documents may only be removed by amending the application during the grant proceedings and subject to Art. 123(2) EPC.104 The latter requirement will most likely not be an issue if the erroneously filed documents or parts are directed to a completely unrelated invention, but the requirement may get the applicant in a trap if the erroneously filed documents and the correct documents are related, e.g., if one is an earlier version of the other and the drafter of the application was still in process of defining the invention. For example, if in an application claiming a bicycle with some special features, the erroneously filed description says “It is essential that the bicycle is an electric bicycle” while the correct description says “It is optional that the bicycle is an electric bicycle”, the strict application of Art. 123(2) EPC by the EPO will require the claims to be limited to electric bicycles because the application as filed indicated it to be essential that the bicycle is an electric bicycle. As another example, if in another application claiming a cycle with some special features, the erroneously filed description says “It is essential that the cycle is a bicycle, i.e. a cycle having two wheels” while the correct description says “It is essential that the cycle is a tricycle, i.e. a cycle having three wheels”, the strict application of Art. 123(2) EPC by the EPO will not allow any claim, as both essential elements cannot be met at the same time. ###Translation errors For a Euro-PCT application filed in another language than one of the official EPO languages, e.g. Chinese, a translation is required under Rule 159(1)(a) EPC. The translation must be a translation of the published application, and thus includes the erroneous as well as correct parts.105 According to the Guidelines, it must also include an indication as to which pages relate to the correct and which to the erroneously filed application documents. The Guidelines indicate that “if, in the case of a correction of erroneously filed elements or parts under Rule 20.5bis(d) PCT by the receiving Office (see C-III, 1.3), translations of the erroneously filed application documents (in relation to items (i) to (iii) above) have not been filed” and “The EPO will invite [the applicant] to furnish the translation within a two-month period from notification of the respective communication under Rule 159(1)(a)”, with further processing being available as a remedy. Strangely enough, the Guidelines do not describe what the situation is if the erroneous parts are in the translation, but the correct parts are not. Note that, if errors are made in translating, the translation may be brought into conformity with the application as filed, i.e., the international as originally filed in Chinese.106 This seems to apply for both erroneous and correct parts. ###Rule 56a EPC and European prior rights Rule 56a EPC107 does also not address the effect of erroneous/correct parts on the Art. 54(3) “prior right” effect that the European patent application may provide against later filings. In our interpretation, current 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, current Rule 56a(4) EPC suggests that the erroneously filed and the correct documents together will provide the Art.54(3) EPC 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) EPC effect.108 109 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.110 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 Rule 56a(4) (as well as of PCT Rule 20.5bis(d)) rather than mere technical knowledge. ### Rule 56a EPC and languages 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?111 ### Rule 56 and 56a EPC and divisional applications 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”. It is proposed to amend Rule 56 and 56a EPC to also apply to the filing of divisional applications with erroneously filed application documents (or parts thereof) where any missing or correct part is completely contained in the direct parent application.112 ### Rule 56a EPC and file inspection 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 will be 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.113 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.114 ### No more time traveling with Rule 56a EPC as amended In order to close the “time travel” loop in Rule 56a EPC, the wording of current Rule 56a(3) EPC should be amended such that correct application documents can only be filed if the erroneously filed application documents were filed on the date of filing, and not through a backdoor (see the Introduction to this article) by filing first an unrelated “missing” claim and later on replace this “erroneous” claim by a “correct” set of claims contained in the priority document. A formulation to this end can be found in the proposal for amended Rule 56a(3) EPC in Annex 1 (note that this paragraph has been renumbered to become Rule 56a(2) EPC). ### Conclusion On 1 November 2022, Rule 56a EPC was 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 (in force since 1 July 2020). Also on 1 November 2022, Rule 56(3) EPC was amended improving alignment with requirements of the Patent Law Treaty and 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 the filing of missing claims is not allowed under Rule 56 EPC. Last but not least, upon inserting Rule 56a EPC and amending Rule 56 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) is missing. Only some (page fees, claims fees), but not all of these other aspects are addressed in the 2023 edition of the Guidelines. It is suggested to clarify these ambiguities and unclarities in a later edition of the Guidelines. In addition, it is advocated to amend Rule 56 and 56a EPC, or to introduce an analogue Rule 56b, to also apply to the filing of divisional applications with erroneously filed application documents (or parts thereof) where any missing or correct part is completely contained in the direct parent application. In Annex 1 proposals to amend Rules 56 and 56a EPC are given. In Annex 2, proposals to amend Rules 38, 45 and 159 EPC are presented resolving unclarities in these Rules caused by Rule 56 and 56a EPC. --- ## ANNEX 1 – Proposal for amended texts of Rule 56 and 56a EPC ### Rule 56 EPC – Missing parts of the description, missing claims or missing drawings (1) If the examination under Article 90, paragraph 1, reveals that on the date of filing parts of the description or missing drawings referred to in the description or in the claims, appear to be missing, or claims or drawings appear to be missing, the European Patent Office shall invite the applicant to file the missing parts within two months. The applicant may not invoke the omission of such a communication. (2) If missing parts of the description, missing claims or missing drawings are filed later than the date of filing, but within two months of the date of filing or, if a communication is issued under paragraph 1 or under Rule 56a, paragraph 1, within two months of that communication, the application shall be re-dated to the date on which the missing parts of the description or missing drawings were filed. The European Patent Office shall inform the applicant accordingly. (3) If the missing parts of the description, the missing claims or the missing drawings are filed within the applicable 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, the missing claims 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 applicable period under paragraph 2: (a) a copy of the earlier application, unless such copy is available to the European Patent Office under Rule 53, paragraph 2; (b) where the earlier application is not in an official language of the European Patent Office, a translation thereof in one of these languages, unless such copy is available to the European Patent Office under Rule 53, paragraph 3; and (c) an indication as to where the missing parts of the description, the missing claims or the missing drawings are completely contained in the earlier application and, where applicable, in the translation thereof. (4) If the applicant: (a) fails to file the missing parts of the description, the missing claims or the missing drawings within the applicable period under paragraph 1 or 2, or (b) withdraws under paragraph 6 any missing part of the description, any missing claim or any missing drawing filed under paragraph 2, any references referred to in paragraph 1 shall be deemed to be deleted, and any filing of the missing parts of the description, the missing claims or the missing drawings shall be deemed not to have been made. The European Patent Office shall inform the applicant accordingly. (5) If the applicant fails to comply with the requirements referred to in paragraph 3(a) to (c) within the applicable period under paragraph 2, the application shall be re-dated to the date on which the missing parts of the description, the missing claims or the missing drawings were filed. The European Patent Office shall inform the applicant accordingly. (6) Within one month of the notification referred to in paragraph 2 or 5, last sentence, the applicant may withdraw the missing parts of the description, the missing claims or the missing drawings filed, in which case the re-dating shall be deemed not to have been made. The European Patent Office shall inform the applicant accordingly. ### Rule 56a EPC – Erroneously filed application documents or parts (1) If the examination under Article 90, paragraph 1, reveals that on the date of filing the description, claims or drawings, or parts of those application documents, appear to have been erroneously filed, the European Patent Office shall invite the applicant to file the correct application documents or parts within two months. The applicant may not invoke the omission of such a communication. (2) If correct application documents or parts referred to in paragraph 1 are filed on or before the date of filing so as to correct the application, those correct application documents or parts shall be included in the application and the erroneously filed application documents or parts shall be deemed not to have been filed. The European Patent Office shall inform the applicant accordingly. [ Because Rule 56a(2) EPC has been deleted, the other paragraphs of Rule 56a EPC are renumbered accordingly ] (2) If correct application documents or parts to correct erroneous application documents filed on the date of filing, referred to in paragraph 1 are filed later than the date of filing, but within two months of the date of filing or, if a communication is issued under paragraph 1 or under Rule 56, paragraph 1, within two months of that communication, the application shall be re-dated to the date on which the correct application documents or parts were filed. The correct application documents or parts shall be included in the application as filed and the erroneously filed application documents or parts shall be deemed not to have been filed. The European Patent Office shall inform the applicant accordingly. (3) If the correct application documents or parts are filed within the applicable 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 correct application documents or parts 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 applicable period under paragraph 2: (a) a copy of the earlier application, unless such copy is available to the European Patent Office under Rule 53, paragraph 2; (b) where the earlier application is not in an official language of the European Patent Office, a translation thereof in one of these languages, unless such copy is available to the European Patent Office under Rule 53, paragraph 3; and (c) an indication as to where the correct application documents or parts are completely contained in the earlier application and, where applicable, in the translation thereof. If these requirements are fulfilled, the correct application documents or parts shall be included in the application as filed and the erroneously filed application documents or parts shall remain in the application be deemed not to have been filed. (4) If the applicant: (a) fails to file the correct application documents or parts within the applicable period under paragraph 1 or 2, or (b) withdraws under paragraph 6 any correct application documents or parts filed under paragraph 2, any filing of the correct application documents or parts shall be deemed not to have been made and the erroneously filed application documents or parts shall remain in the application or be restored to the application. The European Patent Office shall inform the applicant accordingly. (5) If the applicant fails to comply with the requirements referred to in paragraph 3(a) to (c) within the applicable period under paragraph 2, the application shall be re-dated to the date on which the correct application documents or parts were filed. The filing of the erroneously filed application documents or parts shall be deemed not to have been made. The European Patent Office shall inform the applicant accordingly. (6) Within one month of the notification referred to in paragraph 2 or 5, last sentence, the applicant may withdraw the correct application documents or parts filed, in which case the re-dating shall be deemed not to have been made. The European Patent Office shall inform the applicant accordingly. (7) If the applicant files correct application documents or parts under paragraph 2 or 3 after the European Patent Office has begun to draw up the search report, the European Patent Office shall invite the applicant to pay a further search fee within one month. If the search fee is not paid in due time, the application shall be deemed to be withdrawn. ## ANNEX 2 – Other Rules that require change upon amending Rule 56 and Rule 56a EPC Where in the proposed amendments of the Rules in this Annex reference is made to Rule 56a EPC, account is taken of the deletion of Rule 56a(2) EPC and the subsequent renumbering of Rule 56a EPC as proposed in Annex 1. ### Rule 38 EPC – Filing fee and search fee [ Rule 38(1): no change ] (2) The Rules relating to Fees may provide for an additional fee as part of the filing fee if the application comprises more than 35 pages. If the applicant duly filed missing parts of the description, missing claims or missing drawings pursuant Rule 56, paragraph 2 or 3, the additional fee shall be based on the number of pages including the missing parts of the description, missing claims or missing drawings. If the applicant duly filed correct application documents or parts thereof pursuant Rule 56a, paragraph 2 or 3, the additional fee shall be based on the number of pages including the correct application documents or parts thereof; the erroneously filed application documents or parts thereof are to be discarded. (3) The additional fee referred to in paragraph 2 shall be paid within one month of filing the European patent application or one month of filing the first set of claims or one month of filing the certified copy referred to in Rule 40, paragraph 3, or one month of filing any missing parts of the description, missing claims or missing drawings pursuant Rule 56, paragraph 2 or 3, or one month of filing any correct application documents or parts thereof pursuant Rule 56a, paragraph 2 or 3, whichever period expires last. If the applicant duly filed missing parts of the description, missing claims or missing drawings pursuant Rule 56, paragraph 2 or 3, or correct application documents or parts thereof pursuant Rule 56a, paragraph 2 or 3, any additional fees paid based on the incomplete or erroneously filed application documents and in excess of those due after the filing of the missing parts of the description, missing claims or missing drawings or the correct application documents or parts thereof shall be refunded. [ Rule 38(4) EPC: no change ] Rule 45 EPC – Claims incurring fees [ Rule 45(1): no change ] (2) The claims fees shall be paid within one month of filing the first set of claims. If the claims fees have not been paid in due time, they may still be paid within one month of a communication concerning the failure to observe the time limit. If the applicant duly filed missing claims pursuant Rule 56, paragraph 2 or 3 to obtain a complete set of claims, the claims fees shall be based on the complete set of claims and shall be paid within one month of filing the missing claims. If the applicant duly filed a correct set of claims pursuant Rule 56a, paragraph 2 or 3, the claims fees shall be based on the correct set of claims and shall be paid within one month of filing the correct set of claims. If the applicant duly filed missing claims pursuant Rule 56, paragraph 2 or 3 or a correct set of claims pursuant Rule 56a, paragraph 2 or 3, any claims fees paid based on the incomplete or erroneously filed application documents and in excess of those due after the filing of the missing claims or the correct set of claims shall be refunded. [ Rule 45(3) EPC: no change ] Rule 159 EPC – The European Patent Office as a designated or elected Office – Requirements for entry into the European phase [ Rule 159(1)(a) EPC: no change ] (b) specify the application documents, as originally filed or as amended, on which the European grant procedure is to be based; if correct application documents have been duly filed under Rule 20.5bis(d) PCT, the erroneously filed application documents or parts thereof shall be deemed not to have been filed for the purpose of this paragraph; Rule 56a, paragraphs 5 and 6 shall apply mutatis mutandis; [ Rule 159(1)(c)-(h) and (2) EPC: no change ]

C. Mulder (NL)

R. van Woudenberg (NL)

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