EPLAW PATENT BLOG

European Patent Office – Practice to correct text of granted patents has to cease

Posted: August 14th, 2012

EPO, Enlarged Board of Appeal, decision of July 23, 2012 in case G 1/10, to be published in OJ EPO – Request to correct patent/FISHER-ROSEMOUNT

In the case underlying the referral of a point of law to the Enlarged Board of Appeal (EBA), the patent had been opposed on the grounds that a feature in claim 1 of the granted patent had not been disclosed in the application as filed. The proprietor of the patent argued that this resulted from a typographical error made when amending this claim during grant proceedings and that the word “position” in this feature should read “portion”.

On his request, the opposition division took the interlocutory decision to stay opposition proceedings and to remit the case to the examining division for a decision on the proprietor’s request for correction of the decision to grant under Rule 140 EPC. On the opponent’s appeal, the Board of Appeal considered that there was a fundamental point of law and referred the questions to the EBA whether a request for correction of the grant decision filed after the initiation of opposition proceedings is admissible and, if yes, whether the examining division’s decision is binding upon the opposition division.

The EBA answered the questions as follows:

1. Since Rule 140 EPC is not available to correct the text of a patent, a patent proprietor’s request for such a correction is inadmissible whenever made, including after the initiation of opposition proceedings.

2. In view of the answer to the first referred question, the second referred question requires no answer.

In the reasons for the decision, the EBA emphasizes the need for legal certainty and the protection of third parties and notes that the proprietor has adequate remedies available to ensure that the text of the granted patent is correct.

 


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Before grant, the text of the application intended for grant has to be communicated to the applicant for his final approval and an error like a mis-spelt or incorrect word can be corrected under Rule 139 EPC. If the decision to grant contains an error made by the examining division after the applicant’s final approval, so that the text of the patent as granted is not that approved by the proprietor, the proprietor is adversely affected and is entitled to appeal the grant decision.

In addition, the EBA considers that the absence of a possibility to request corrections of the text of the patent under Rule 140 EPC should not prejudice patent proprietors. If on the one hand a correction would be obvious, there could be no surprise and no adverse effect on third parties, because all concerned should read the patent as if corrected. If on the other hand a correction would be less than immediately obvious, then it should not in any event be allowed under Rule 140 EPC.

Read the decision (in English) here.

Reported by: Rudolf Teschemacher


One Response

  1. Andre says:

    the EBA states that the suesinpsve effect of an appeal is not the reason that a divisional can be filed during the appeal period, I might indeed be a little too quick to conclude that a divisional can validly be filed during a period in which the application is deemed to be withdrawn and further processing can be requested.The EBA relies heavily on Art. 67(4) EPC, which provides that an application shall be deemd never to have had the effects of provisional protection when it has been “withdrawn”, “deemed to be withdrawn” or “finally refused”. The EBA then reasons that an application is “finally refused” only when the appeal period has expired. However, there is clearly no need for the period for requesting further processing to have expired for an application to be “deemed to be withdrawn”.Since r. 3.2.4 stresses that an application is pending if it is in a status in which “substantive rights” deriving from the application under the EPC are (still) in existence, I guess it could be argued that an application is not pending if it is “deemed to be withdrawn”, even though the applicant can simply request further processing and thereby revive those substantive rights retroactively.So for the moment I withdraw my earlier suggestion that a divisional may now also be filed during the period in which further processing can be requested.Does a European patent application give rise to any other “substantive rights” apart from the provisional protection of Art. 67? Given that provisional protection only exists from the date of the publication of the application, one could wonder if any “substantive rights” exist before the publication… If that is not the case, G 1/09 seems to suggest that a divisional application cannot be filed before publication. This is almost certainly not the intention of the EBA, but still.What other substantive right am I missing?Is it sufficient that future publication and therefore future provisional protection is more or less guaranteed once various fees have been paid and various acts have been performed? Even if that is the case, it would be required to pay those fees and performs those acts before a divisional can be filed.Is there anybody else who believes that G 1/09 might imply that a divisional cannot be filed before publication of the (parent) application?

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