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Correction of Errors at the EPO: it’s not their fault

Correction of Errors at the EPO: it’s not their fault

08/08/12

In a recent decision (G1/10), the EPO’s Enlarged Board of Appeal (EBoA) considered the interpretation of Rule 140 EPC, relating to the correction of errors.

Rule 140 EPC reads: “In decisions of the European Patent Office, only linguistic errors, errors of transcription and obvious mistakes may be corrected.”

The case arose from an earlier opposition, filed on the sole ground that the patent in question contained added-subject matter.

In particular, it was argued that the feature “means for initiating (56) a command related to a position of the device data” contained in claim 1 of the patent, was not disclosed in the application as originally filed.

The proprietor argued that this was a typographical error made during the pre-grant procedure and that the feature should have read “means for initiating (56) a command related to a portion of the device data”.

The proprietor therefore requested that opposition proceedings be suspended and the case be referred back to the Examining Division for correction under the Rule equivalent to Rule 140 EPC at the time.

The case was referred back to the Examining Division for a decision on the request for correction. The Opponent appealed against this and as a result, the following questions were referred to the EBoA: 

  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?

The EBoA in response to question 1, ruled that “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”.

In view of the above, the EBoA stated that the second question did not require an answer.

What this means:

This decision essentially prevents patent proprietors from attempting to use Rule 140 EPC to “tidy up” errors in patent documents which they have filed pre-grant. 

The EBoA held that a patent applicant has “adequate means at his disposal to ensure his patent as granted is in the exact form he wants it to be without any need to invoke Rule 140 EPC”, for example by correcting the mistake under Rule 139 EPC.

The EBoA also commented that a patent applicant is obliged to approve the final text in which his patent is to be granted, thereby having a further opportunity to correct any mistakes without needing to invoke Rule 140 EPC.  The EBoA therefore held that once a patent applicant has approved the final text intended for grant, the responsibility for any errors within the patent documents rests with the applicant and cannot be imputed to the Examining Division.

It was also noted by the EBoA that, at grant stage, the European patent becomes a bundle of national patents and therefore the EPO is no longer competent to deal with matters relating to the text of the patent (other than in opposition and limitation proceedings).

This decision highlights the provisions available under the EPC for making corrections to the patent documents, as well as the importance of thoroughly checking the documents for errors before accepting the final text for grant.