Artist Bjørn Bjørnholt

Enlarged Board of Appeal Decision G 1/10

23. July 2012

Request to correct patent

Peter Sørensen

M.Sc. Physics/ChemistryEuropean Patent Attorney, Partner

T +45 87 32 18 04 E psn@pv.euJanuary 2013

Errare humanum est…

Outline

- Legal basis

- Questions & Answers by EBOA

- Specific case of EP0961184

- Reasons pro et contra

- Amendments vs. corrections

- Practical tips

- Summary

Overall legal basis for corrections and amendments

Article 123 EPC Amendments

Rules for amendments and corrections: 

Rule 137 Amendment of the European patent application 

Rule 138 Different claims, description and drawings for different States 

Rule 139 Correction of errors in documents filed with the European Patent Office 

Rule 140 Correction of errors in decisions 

Rule 140 EPCCorrection of errors in decisions 

In decisions of the European Patent Office, only linguistic errors, errors of transcription and obvious mistakes may be corrected.

Amendments and corrections

”Admissible” Timing with respect to procedure

”Allowable” Substantive issue

Case Law of BOA at EPO, Section III

Guidelines for Examination at EPO, Section H

6

Questions asked by Board of Appeal:

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 so 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?

Answers by Enlarged Board of Appeal:

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.

Opposition initiated…

Practice up till G 1/10:

Rule 71(3)Informed of decision to grant, Art. 97 (1)

Grant

Rule 140 correction of patent text possible with Exam. Division

timeOpposition proceedingsCorrection of errors possible under R139 EPC

Approval of ‘Druck’ translation+ fee

9M

Opposition initiated- No ‘collision’ with

Exam. Division

After G 1/10:

Rule 71(3) Informed of decision to grant Art. 97 (1)

Grant

Rule 140 correction of patent text NOT possible after grant !

time

Approval of ‘Druck’ translation+ fee

Opposition proceedingsCorrection of errors possible under R139 EPC

Correction of error cause by EPO transcription of ‘Druck’ possible by appeal of Decision to Grant 2 months window

9M2M

Specific case of EP0961184

11

EP0961184 to Fisher-Rosemount Systems, Inc.

A computer-based database management method permits management of a configuration database associated with one of a plurality of devices. Each device has a variable configuration which includes at least one adjustable parameter.

The method includes the steps of selecting a particular device, selecting a particular parameter of the particular device, assigning a particular value for the particular parameter at a particular time, communicating the particular value for the particular parameter to the particular device at the particular time, creating a transaction record, and storing the transaction record in a configuration database.

The transaction record includes an identifier uniquely identifying the particular device and further specifies the particular parameter of the particular device, the particular value for the particular parameter, and the particular time at which the particular value is to be applied to the particular parameter.

12

13

Claim 1 as granted

14

Typographical error!Should be ‘portion’ of the device data, not ‘position’….

History of EP0961184

- Filed 1997, granted 2003

- September 2004, Opposition filed: - Sole ground for opposition; added subject-matter Art. 100 (c) EPC

Reason: ”…position of device data…” has no basis in the application as filed

- December 2005, patentee requests case referred back to Exam. Div. for correction of error

- November 2006, Opposition Div. issued communication that case is referred back to Exam. Div.

- This procedural action is not a formal decision but a communication, hence the opponent’s appeal against this referral was thus considered an inadmissible appeal… BOA decision T 165/07 in November 2007

- March 2009, Opposition Div. takes decision that the case is referred back to Exam. Div. for correction of error, opponent appeals this decision

- June 2010, BOA decision T1145/09 issued with referral to EBOA; - Fundamental point of law &- Uniform application of law (T 268/02 in conflict with T 79/07)

- July 2012 EBOA decision, case referred back to Opposition Div.

15

Reasons pro et contra

16

17

Interest of 3rd parties,

the ‘Public’

Procedural efficiency of EPO

Interest of applicant/patentee

EBOA has to balance the interests…

Arguments in favour of previous use of Rule 140

- Exam. Div. responsible for the Decision to Grant; they should correct it, G 8/95, Reasons 3.4

- Rule 140 has no time limit

- Rule 140 only relates to obvious errors, 3rd parties not affected because of strict standard for being obvious

- Corrections are different from amendments

- Opposition Division may review corrections approved by Exam. Division

18

Arguments in favour of limiting the use of Rule 140 after grant

- Limitation of EPO compentence after grant, national patent offices provide means for correction

- No delay of opposition proceedings

- Legal certainty for 3rd parties; Rule 140 applied after 9M term for opposition leaves would-be opponents in a harsh situation!

- Inter partes opposition proceedings should not be turned into ex partes proceedings before Exam. Div.

- “If … a correction would be obvious then… 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. “ , Reasons point 8.

19

Amendments vs. corrections

EPO standard for corrections of obvious errors:

Both the error and the correction must be such that it is immediately evident (at least once attention is directed to the matter):

(i) that an error has occurred; and 

(ii) what the correction should be (directly and unambiguously). 

G 11/91 & G3/89 Guidelines for Examination at EPO, Section H, 4.2.1

Examples:

• Typing errors, spelling errors, etc.

• 2+2 =5 2+2= 4 or 2+3= 5 ?!

• Position of device data portion of device data ?!

21

Difference between amendments and corrections?

EBOA seems to consider corrections as a special kind of amendments;

“However, it is always open to a patent proprietor to seek to

amend his patent during opposition or limitation

proceedings and such an amendment could remove a

perceived error. Such an amendment would have to

satisfy all the legal requirements for amendments

including those of Article 123 EPC.”, Reasons 13

22

Corrections are different from amendments in some respect…

Relation between Rule 139, 2nd sentence, and Art 123 (3) EPC when correcting obvious errors?

Legal fiction: Obvious errors should be read as if they were written as originally intended, correction has retrospective effect.

No extension of scope under Art 123 (3) EPC when obvious error is corrected!

T 200/89 (OJ 1992, p. 46):

1. An allowable correction under Rule 88 [139] EPC has a retrospective effect, in contrast to an amendment under Article 123 EPC, which is not retrospective.

2. Article 123(3) EPC and Rule 88 [139] EPC contain different requirements which are both intended to ensure legal certainty in the sense that after amendment or correction, to a skilled person, the protection conferred by the patent should not be greater than was apparent before the amendment or correction.

G 3/89; …correction under Rule 88 [139], second sentence, EPC is of a strictly declaratory nature. The corrected information merely expresses what a skilled person, using common general knowledge, would already derive on the date of filing from the parts of a European patent application, seen as a whole, relating to the disclosure. This does not therefore affect the content of the European patent application as filed. Under these circumstances, there cannot be said to be any retroactive effect.

23

Practical tips

24

Patent propiertor point of view

- G 1/10 to be fully implemented with next version of Guidelines, Sept. 2013

- Important terms in claims should be explained and supported by the description (less ‘sensitive’ to errors)

- Check your application text /‘Druck’ carefully, errors not the responsibility of EPO even though they grant the patent:

“That [previous] practice suggests some 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.”, Reasons point 11

- Review publication of the EP patent (B) carefully,

Appeal Decision to Grant, if critical errors are present due to EPO transcription.

- Consider correcting errors with national patent offices

25

3rd party/opponent point of view

- Read obvious errors in granted patent as if corrected

- Check if patent is corrected following 2 months after grant decision

- Is the error really obvious under EPO’s standard?

- If not obvious, the error could be used for a good Art. 123 2/3 EPC attack…

- General interest of the public; correct patent texts

- Is this purpose fulfilled with G 1/10 ?

- Is the general public aware of what an ‘obvious error’ is…?

26

Summary

- G 1/10 limits the possibility to correct errors in the patent text after grant

- G 1/10 not related to bibliographic information incl. priority data

- Read your application/‘Druck’ copy carefully before grant;

- Errors may be expensive and time consuming to correct

- Errors may be irreparable if they are not obvious!

- Read patents with obvious errors as if corrected

Remember the strict EPO requirement for ‘obvious’ error

27

Questions?