Monday, 12 October 2009

J 16/08 - Swedish Gymnastics

This decision deals with a legal situation that is more or less obsolete, as it concerns an error of designation. Due to an error in the instructions given to a Japanese attorney, France was designated instead of Sweden. However, the decision is not without interest as it considers the effect of an erroneous publication in the European Patent Register (EPR).

[… There is] no need to go beyond the principles considered in the well-established jurisprudence summarized in J 7/90 and also endorsed in J 6/02. That summary corresponds to the three conditions to be met by a request for correction of a designation posited by the appellant in its statement of grounds of appeal: [the correction of an erroneous designation which requires no payment of a designation fee is allowable if: (a) it complies with the applicant’s initial intention, (b) the request is made without undue delay after the error is discovered, and (c) the request is received in sufficient time to enable publication of a warning together with the EP application. ]. The Board must next consider whether the appellant’s evidence is sufficient to prove the facts relied on. [10]

First, there is the question of how the mistake arose and whether that could be treated as an “excusable oversight”. [… T]he statement clearly describes both the appellant’s original intention (to designate Germany and Sweden) and how, by a simple human error, that original intention was mistakenly implemented (by designation of Germany and France). The mistake appears to be one capable of classifying as an “excusable oversight”. [11]

Second, as regards how and when the mistake was discovered, Mr. Kasuya’s statement is equally straightforward. The mistake was not noticed until, on receiving notification that the fifth annual renewal fee had been paid, Mr. Kasuya happened to check his files and discovered his own earlier error. [12] 13. Thus, of the three conditions which according to the case-law must be satisfied by a request for a change of designation, two appear to be satisfied by the appellant’s account of how the mistake came about and how it was discovered. First, it appears that a mistake was made, that this was an excusable oversight, and that the correction would give effect to the appellant’s original intention. Second, the request was made without undue delay after the error was discovered. This requirement is clearly designed to ensure that, so far as possible, requests for corrections are made before publication […].

Thus whether or not there has been delay must reflect the facts of the particular case. In the present case there is the highly unusual fact that, due apparently to an oversight on the part of the EPO, all publications of the application or of its data showed and still show today all contracting states (CS) as designated. The consequence of this is that a change in the published information will not, as regards the correction sought, show the published information to have been misleading (see point 14 below). Thus, while the request for correction could probably have been filed more speedily than in fact it was, it cannot be said it was done with undue delay. [13] The question which then arises is whether the remaining condition - the “time limitation” condition - has been met or, as the appellant submits, whether it need not be met in this case. The requirement that a request for correction must in the public interest be made early enough to enable publication of a warning together with the EP application is both reasonable and necessary. It balances the protection of, on the one hand, applicants who wish to correct genuine mistakes and, on the other hand, third parties who rely on published information.

In the present case it appears that, regardless of the applicant’s wishes as expressed in section 10 of Form 1200 to confine the designations to two CS, the application when published showed all possible CS as designated and the EPR still shows that today. Thus, third parties will not be prejudiced by the correction since up to the date of this decision no publication has ever indicated that the territorial scope of the claimed invention was limited to two CS. The fact that after the correction one of those states will be different from one originally but erroneously indicated by the appellant in box 10.2 of Form 1200 will therefore make no difference. Accordingly, in the unusual circumstances of this case, the third condition of the case law need not - indeed cannot - apply. [14] The appeal is therefore to be allowed with the result that the designation of France will be replaced with the designation of Sweden. [15]

I think the decision has to be approved. The Board could have mentioned the fact that the original (“erroneous”) form was also in the EPR file. To this extent it appears incorrect to say that “no publication has ever indicated that the territorial scope of the claimed invention was limited to two CS.” However, the conclusion would have had to be the same, as the reference to all the CS being designated would have created at least some doubt in third parties consulting the whole EPR file.

This decision is also discussed in detail here (in French).

To read the whole decision, click here.