G1/10: (Interpretation of Rule 140 EPC

Rule 140 EPC reads:

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

The decision stems from an opposition filed in 2004 on the sole ground that the patent at issue contained added subject matter.

Claim 1 of the patent contained the feature “means for initiating (56) a command related to the position of the device data” which was alleged not to have basis in the application as filed.

The proprietor argued that a typographical error had been made during the pre-grant procedure and the claim should have read “means for initiating (56) a command related to the portion of the device data”. Consequently, the proprietor requested that opposition proceedings were stayed and the case be remitted to the Examining Division for correction under the rule equivalent to Rule 140 EPC at the time.

In 2009 the Opposition Division took the interlocutory decision to stay the opposition proceedings and remit the case to the Examining Division for a decision on the request for correction. The Opponent appealed and in the subsequent appeal the following questions were referred to the Enlarged 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 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?

With respect to question 1 the EBoA answered 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 doing so the EBoA has ruled out the possibility of proprietors using Rule 140 EPC to “tidy up” errors in patent documents which they have submitted prior to grant.

This practice arose following decision T850/95 which established that as the decision to grant a patent referred to the documents which form the text of the granted patent, they became an integral part of the decision to grant. While the EBoA agreed with this statement, it did not agree with the subsequent conclusion that errors in the text of the patent are thus correctable under Rule 140 EPC as they are part of the decision to grant.

The EBoA pointed out that a patent applicant has adequate means at his disposal to correct errors in documents during examination and is also given the opportunity to approve the text of the patent before grant. Thus it would be illogical to impute responsibility for a mistake in the patent text to the Examining Division by suggesting the Examining Division did not intend to make a decision which included the very text approved by the applicant himself.

Furthermore, the EBoA noted that at grant the European patent becomes a bundle of national patents thus ceases to be within the jurisdiction of the EPO. Consequently, the EPO is no longer competent to deal with further matters relating to the text of the patent (other than in opposition and limitation proceedings).

With respect to the second question the EBoA stated that no answer was required in view of the answer to the first question.

Useful Link

Full decision (European Patent Office website): http://www.epo.org