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Wednesday, 14 July 2010

New referral to the EBO: until when can a correction under Rule 140 be requested?

A new referral is pending before the EBO (G 1/10). It concerns a procedural question regarding the timing of a request for correction under Rule 140 (old Rule 89).

The facts of the case are, simplified, as follows: the appellant had based its opposition on added subject-matter. Its sole argument was that claim 1 of the patent as granted contained a feature, "means for initiating a command relating to a position of the device data" that was not disclosed in the original application. The patentee argued that the claim should have read "means for initiating a command relating to a portion of the device data", and position was merely a typographical error. It requested that the opposition be stayed and the patent be sent back to the examining division to correct the "obvious mistake". Both parties agree that if the feature reads indeed "portion", the claim does not contain any added subject-matter, and the opposition is to be dismissed.

The Technical Board of Appeal is basically asking the EBO

  1. whether a request for correction under Rule 140 which was filed after initiation of opposition proceedings is admissible and
  2. if it is admissible, whether the Opposition Division is bound by the decision of the Examining Division correcting the patent (if any), or whether the Opposition Division can examine whether the correction decision amounts to an unallowable amendment of the granted patent.
Not sure how great the practical importance of this referral is; maybe readers who are prosecutors more than litigators can comment. Seems to this Kat a rather rare case where an (admissible) correction can be decisive for the outcome of an opposition. On the other hand, if there was an obvious error, I don't see why the patentee should be barred from a correction merely because opposition proceedings have been initiated, but maybe I am missing something (I can see the potential for abuse, but is that ever a reason to bar a remedy completely?)


Anonymous said...

The question here is - was the error in claim 1 the result of an error of transcription by the applicant when drafting the documents he sent to the EPO in examination proceedings, or was the error that the wording was present in the claim 1 submitted by the applicant but inadvertently omitted by the EPO in the decision to grant? The first case (by far the most common) the correction is made according to Rule 139 (old Rule 88) and this can only be done during the examination proceedings, since once the decision to grant is beyond question (after despatch of the decision to the EPO internal mail service) the text of the patent can no longer be amended or corrected, because the decision to grant was in fact correct in the sense that the error was not recognised in examination and so no correction was requested by the EPO or offered by the applicant under Rule 139 and the decision to grant was correct because it was based on a text submitted by the applicant and accepted the EPO. In this case the decision can no longer be amended (G12/91).

If on the other hand the error was that the wording was accidentally omitted by the EPO in the decision to grant (but was present in the text submitted by the applicant, proposed to him under Rule 71(3) and then accepted by him), then it is the decision which is wrong since it was not based on the claim 1 submitted by the applicant and accepted by the EPO and as such it is the decision which should be corrected (not the text of the claim as submitted, since this was correct). This correction is according to Rule 140 (old Rule 89). Since the decision ends the examination procedure (or indeed any procedure) then this can only happen after it is issued and so after the point in time referred to in G12/91 (confirmed in T_493/08).

Anonymous said...

Is there a procedure to file Amicus Briefs at the EPO?

Anonymous said...

For the Enlarged Board of Appeal, this is standard practice - simply quote the referral number G1/10 in your letter. This is made possible by Art. 10 of the Rules of procedure of the Enlarged Board of Appeal. However, according to Art. 10(1) of the RPEBOA the Enlarged Board is not obliged to consider any comments filed, but may do so.

Anonymous said...

What is the deadline to write some amicus brief?

Anonymous said...

Keep an eye on the EPO list of pending EBoA referals on its web-site, at some point the Board will announce a deadline for filing amicus curiae briefs and this should be reported here:

Anonymous said...

I had an opposition in which it was suggested an obvious error should be corrected while other amendments were being made. The Opponent vehemently resisted much to the surprise of the Opposition Division who would have been content to include the tidying up. It was not crucial but I suspect this does reflect a wider issue. Here it is rather crucial and I suppose someone will argue its broadening the scope of the claim.

Anonymous said...

A similar situation arose in respect of EP 466199 relating to factor VIII in which the proprietor wished to replace "anti-coagulant" as granted with "coagulant" as an obvious mistake. Unfortunately, the BoA found other grounds for revoking the patent and therefore did not consider the validity of a Rule 88 / Rule 139 amendment.

My view is that such get out of jail free cards should not be allowed in opposition proceedings or at least should be subject to some punitive sanctions à la Section 28A.

Anonymous said...

The referring TBA is only looking for an answer on R140 it seems, in particular because the applicant itself filed the incorrect text "position" and not "portion". The danger the TBA sees ispresumably that the Ex Division in this case could overstep its power (possibly in unexpected ways - maybe add an indpendent claim or two?) and allow a correction to the text (really a Rule 139 matter), giving applicants a non-intended back door to correct the text rather than the "decision". Hence the one way street question of the Board?

Maybe it is useful to remember that errors made by the applicant in texts it is responsible for filing at the EPO, if undetected by the Ex Division, should be picked up under Rule 71(3) by the applicant who has the responsibility for checking at that stage for any slip-ups - see also Rule 71(4) "correction of errors under Rule 139". Obviously new errors can occur in the grant decision and old and new errors might reasonably be detected at that stage when doing this check, so it seems implicit in the EPC that text errors of this kind should be allowed up to publication of the patent (bulletin) - when the legal effect kicks in. Hopefully the EBoA will agree that it is implicitly a "hands off" for the Ex Division after grant for these sorts of undetected even if "obvious" errors. The Oppo Divisions and the TBAs have the power to interpret the claims anyway, and they regularly do, also in light of obvious errors, without the Ex Divisions delaying everything.

Anonymous said...

Isn't the point that the type of error correctable under R 139 must be an error that would have been obvious to anyone reading the documents in the sense that it must be immediately obvious that nothing else would have been intended? Art 69 EPC and its somewhat nebulous protocol do indicate that the scope of protection is not to be limited to the strict, literal wording of the claims, but protection needs to be considered in the light of the application as a whole. To this extent, errors that are correctable under R 139 could be considered to be merely explicitly stating what the skilled person would implicitly understand the uncorrected error to have meant in the first place. On this basis, the correction of an obvious error in a claim which is clearly in the nature of a typo, would not affect the scope of protection because the error and its correction would have been immediately obvious. If an error is not immediately obvious, then it ought not be allowed.

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