T 1795/07 – Acting As If

From time to time there are errors in decisions to grant a patent. The normal remedy is to request correction under R 140, which states:

“In decisions of the EPO, only linguistic errors, errors of transcription and obvious mistakes may be corrected.”

Such a correction may take place during opposition proceedings (you might remember that there is a pending referral to the EBA on that topic : G 1/10), but apparently this is not the only way to overcome an error in a decision to grant. The present decision shows that the Opposition Division (OD) and the Board of appeals may act as if the correction had been carried out.

Claim 1 as granted read:

1. A detergent composition containing

(a) a water-soluble builder; and

(b) an enzyme

wherein a means is provided for delaying the release to a wash solution of said enzyme relative to the release of said water-soluble builder such that in the T50 test method herein described the time to achieve a concentration that is 50% of the ultimate concentration of said water-soluble builder is less than 60 seconds and the time to achieve a concentration that is 50% of the ultimate concentration of said enzyme is more than 50 seconds, wherein the means comprise a coating which delays the release of the enzyme and also comprise one or more of (1) a coating on the builder which accelerates release of the builder and (2) selection of the particle size of the builder to less than 1200 µm and an average particle size of 1100 to 500 µm.

The published claim differs from its originally granted version (the “Druckexemplar” prepared by the Examining Division (ED)) in that the expression “50 seconds” of the published claim was instead “90 seconds” in the originally granted version.

In its response to the notice of opposition, the patent proprietor requested, inter alia, the correction of the error of transcription:

This issue resurfaced before the Board of appeal, after the OD had revoked the patent:

[1.1] It is apparent that claim 1 of the published version of the patent in suit contains an error of transcription in respect of the version originally approved by the patent proprietor and that the ED has decided to grant. This error was already mentioned during the opposition proceedings and the decision under appeal is manifestly based on the originally granted version of this claim.

Accordingly, also the following decision is reasoned as if the wording of granted claim 1 would not contain such evident transcription error and, thus, would define the minimum T50 of the enzyme as “more than 90 seconds” (rather than “more than 50 seconds”).

I wonder what the legal basis for “acting as if” might be. Where does this discretion come from?

Should you wish to download the whole decision, just click here.

To have a look at the file wrapper, click here.