Requests to correct denied: G 1/10

Much later than usual, the IPKat is bringing to readers’ attention an EPO Enlarged Board decision, G1/10, which issued at the end of last month and which can be found here.

An error, obviously. But what's the correction?
Merpel tells the IPKat it should read 2 + 2 < 5

The Decision is ostensibly about correcting grant decisions of the EPO, but in reality it’s concerned with how one may correct an error after grant in a patent specification. The vast majority of requests for “correction of the grant decision” are actually not about the EPO’s decision at all, but are really a back-door route to correct errors in the granted patent specification, based on the legal formality that the granted specification is also an integral element of the decision to grant.

The Enlarged Board had been asked "Is a patent proprietor's request for correction of the grant decision under Rule140 EPC which was filed after the initiation of opposition proceedings admissible?". If admissible, there was a further question about whether the examination division or opposition should be competent to decide on the correction.

Noting this fact, and following a rich tradition of appellate bodies answering the question they would like to have been asked, rather than that actually asked of them, the Enlarged Board confined itself to discussing post-grant corrections of the patent specification. (The restriction of the Decision to such corrections is disappointing, as discussed below. Not all post-grant corrections are about the specification itself, and other types of correction can also have far-reaching effects.)

The operative part of the Decision was 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 [as to which body is competent to decide a request] requires no answer.

Other Remedies

While agreeing with the established case law holding that patent documents referred to in a grant decision become an integral part of the decision, the Enlarged Board disagreed that errors in those documents could subsequently be corrected under Rule 140 EPC (old Rule 89). The Board noted that this practice suggested that "patent applicants seek to rely on Rule 140 EPC to "tidy up" their own errors by the fiction of ascribing them to the examining division."

The Board was satisfied that there were “adequate remedies” available to the patentee, both before and after grant, including the general power to correct errors before grant under Rule 139 (old Rule 88), the requirement that the applicant approve the text under Rule 71(3) as part of the grant procedure, the possibility of appealing the grant decision where the Examining Division (but not the applicant) introduces an error after the Rule 71(3) approval, and amendment under Article 123 during opposition or limitation proceedings.

The IPKat notes that the Enlarged Board has squarely placed the responsibility for pre-grant errors back on the shoulders of the patentee, and has emphasised the binding nature of approval of the text under Rule 71(3). Once that text is approved and the patent is granted, you had better hope that any remaining errors are strikingly apparent to even the dullest of minds.

The IPKat suspects that, leaving aside the pre-grant possibilities for correction, there will be plenty of granted patents whose errors which cannot be remedied by appeal in the short two-month post grant window, or by amendment in opposition or limitation proceedings; after all, the patent may not be opposed, or the grounds for opposition may not justify making the correction, and one can only submit a request for limitation by making an amendment in which the claim scope is actually reduced.

Mind over matter

However, there is some consolation for proprietors of patents with correctable errors in the following observation from the Enlarged Board, which one suspects will be regularly cited to national courts, and indeed to opposition divisions (Reasons for the Decision, 8):

Here's hoping the Court interprets the
uncorrected claim correctly

Further, the Enlarged Board considers that the absence of a possibility to request patent corrections under Rule 140 EPC should not prejudice patent proprietors. If on the one hand a correction would be obvious (as it should be to satisfy Rule 140 EPC) then, as the respondent proprietor submitted (see section VI.2 above), there can be no surprise and no adverse effect on opponents or others, because all concerned should read the patent as if corrected and an actual correction should not be necessary. 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 which is confined to correction of "obvious mistakes".

For an example of this doctrine in practice – a patent being interpreted as though an error had been corrected – take a look at Decision T 1795/07, or save yourself the hard work and read the summary on the ever-informative K’s Law blog.

Missed opportunity

At the outset the IPKat noted that the Enlarged Board answered a more limited question than was asked of it. This leaves open the very pertinent question of what happens when errors are discovered which are not within the description, claims and drawings.

For example, one of the two amicus briefs filed with the Enlarged Board (the other being submitted by epi) came from a firm of patent attorneys which had represented an opponent in a case where the patent was granted with a priority claim missing (it was a divisional granted with one priority; the parent had two). During opposition the patentee requested and was granted a correction of the grant decision under Rule 140. A priority claim was thereby added, the prior art was then no longer within the state of the art, and the opponent’s case was effectively over. The opponent was further disadvantaged by the fact that the correction was entrusted to the Examining Division and the opponent was not a party to that correction procedure and thus could not appeal the corrected decision to grant.

Clearly corrections of this nature are very far-reaching and can have significant effect on third parties. They are also far from “obvious” if one only looks at the patent specification on its face. It is only by inspecting the file or comparing a divisional with its parent that one will spot any discrepancy.

Situations such as this were clearly within the ambit of the question asked of the Enlarged Board, and the referring Board was careful to frame its questions broadly (see referring Decision T1145/09: despite the parties submitting questions which mentioned correction of the claims, the Board broadened out the questions to ask for a more general ruling about admissibility and competence for all Rule 140 corrections of the grant decision). As a reminder, the questions asked of the Enlarged Board were:

1. Is a patent proprietor's request for correction of the grant decision under Rule 140 EPC which was filed after the initiation of opposition proceedings admissible? In particular, should the absence of a time limit in Rule 140 EPC be interpreted such that a correction under Rule 140 EPC of errors in decisions can be made at any time?

2. If such a request is considered to be admissible, does the examining division have to decide on this request in ex parte proceedings in a binding manner so that the opposition division is precluded from examining whether the correction decision amounts to an unallowable amendment of the granted patent?

This Kat can’t entirely understand why the Enlarged Board did not answer the question as asked of it. After all, it gave reasons for admissibility of the referral which seem to apply with as much or even greater force to corrections such as the addition of a priority claim during opposition, i.e. “the referred questions relate to a decisive issue in the case before it concerning the interpretation of Rule 140 EPC, the delimitation of the respective competences of the examining and opposition divisions, and the possible intercalation of ex parte and inter partes proceedings.”

[Merpel has awarded 5 bonus points for use of the satisfyingly obscure and interesting word intercalation, but the points go to the referring Technical Board of Appeals, from whose decision the EBA lifted this passage verbatim. The all-time points leader in this hard-contested competition – which Merpel has just now invented – is Lord Hoffman for that unbeatable one-two combination in Improver v Remington which has had trainee patent attorneys reaching for their dictionaries for over two decades: “the patentee was intending the word or phrase to have not a literal but a figurative meaning (the figure being a form of synecdoche or metonymy)”.]

By limiting its deliberations to corrections of the specification and drawings, this leaves open the issue of what happens when a patentee looks to correct (say) a priority claim and thereby defeat an opposition. It is unclear whether the EPO’s practice of placing the opposition on hold and allowing the examining division to decide on the correction should continue. More generally it is not clear whether such corrections ought to be entertained at all during an opposition. If they are to be admissible, is it relevant whose error it was (applicant's or EPO's), or whether the error also appeared and was not objected to in the bibliographic data included with the Rule 71(3) Communication? Answers can be written on the back of a live mouse and sent to the IPKat.