Patent attorneys will be well aware that not mentioning relevant prior art known at the time of filing cannot of itself make a European application or patent invalid. The examiners for application 06024212.0, however, apparently thought differently, contrary to long-standing EPO practice. From a rather strained interpretation of the German version of the relevant rule, the examining division's view was that not including a reference to relevant prior art known to the applicant at the time of filing would make the application void ab initio. The application was refused as a result.
In the resulting decision T 2321/08, the Board considered that the examining division had got it completely wrong. Rule 42(1)(b) did not put any stringent obligation on the applicant to cite relevant documents known at the time of filing, and failure to do so was in any case correctable after filing by making appropriate amendments.
Content of the description
(1) The description shall:
(a) specify the technical field to which the invention relates;
(b) indicate the background art which, as far as is known to the applicant, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art;