T 600/08 – Cured

Opponent 3 was the only party to file an appeal against the decision of the Opposition Division to maintain patent EP 1 022 787 in amended form.

This patent was based on a divisional application from application EP 0 400 146 filed by Siemens AG. The divisional application had been filed on December 10, 1999, in the name of Osram Opto Semiconductors GmbH & Co. OHG (hereinafter OOS).

On May 12, 2000, the applicant’s representative requested a correction (pursuant to R 88 EPC 1973) of the name of the applicant. He pointed out that at the time of the filing of the divisional application, the parent application (referred to as “root application” (Stammanmeldung) in the decision) had already been transferred from Siemens to OOS but the transfer had not yet become effective before the EPO. The fact that the divisional had been filed in the name of OOS was due to an error.

On June 2, 2000, the RS allowed the correction.

The opponent argued that the RS should not have granted the request to correct the designation of the applicant for the divisional application. Therefore, the application based on which which the patent under consideration had been granted never was a valid divisional application. As a consequence, its effective date was the date on which the divisional application was filed, and the publication of the parent application was novelty-destroying prior art for the “divisional” application.

The patent proprietor pointed out that the effective date of a patent based on a divisional application could only be the date of filing of the parent application. Consequently, the parent application could not destroy the novelty of the opposed patent.

According to the patent proprietor, the – incorrect – objection that the RS should not have allowed the correction could not be invoked in the appeal proceedings.

In what follows, the Board deals with the novelty objection:

*** Translation of the German original ***

[2.1] The impugned patent is based on divisional application n° 99 124 677. The divisional application was filed on December 10, 1999. The OOS company was named as applicant. Application n° 89 109 835, which had been filed on May 31, 1989, by Siemens AG was cited as previous application (root application).

When the divisional application was filed, Siemens AG was still named as applicant for the root application in the European Patent Register (EPR).

The transfer of the root application from Siemens AG to OOS was only entered into the EPR on January 31, 2000, after a corresponding request had been filed on the same day.

In a communication dated May 4, 2000, the RS of the EPO informed the applicant for the divisional application that at the time of filing of the divisional application the applicant for the divisional application was not the same as the applicant for the root application and that, unless the error was corrected within one month after the receipt of the communication, the applicant would be informed by means of a communication pursuant to R 69(1) EPC that the above mentioned application could not be treated as a divisional application.

Then Siemens AG, in a written submission dated May 12, 2000, requested that the applicant of the divisional application be corrected – under R 88 EPC 1973 – to Siemens AG.

[Siemens AG] justified this request by pointing out that, from a substantive point of view, at the time of filing of the divisional application the root application had already been transferred from Siemens AG to OOS but that this transfer had not yet become effective before the EPO. This had been overlooked when the divisional application was filed. Therefore, the OOS company had been erroneously named as applicant for the divisional application.

In a communication dated June 2, 2000, the RS informed [Siemens AG] that the correction of the applicant had been allowed.

[2.2] The appellant objected to this [course of action]. A correction pursuant to R 88 1973 should not have been made. As a consequence, there was no valid divisional application and the effective date of the impugned patent was the date of receipt of the underlying application. Consequently, the content of the root application was novelty-destroying for the application that had been filed as a divisional application. The whole matter should be treated in analogy to a case where a priority was not validly claimed.

[2.3] The Board cannot endorse this reasoning. After all, it can be left unanswered whether [the RS] was right at that time in allowing the correction - although there are good arguments for concluding that it was - or not. But even if the correction should not have been made at that time there is no support in the EPC for the consequences the appellant derives from it.

As the Enlarged Board of appeal has explained in decision G 1/05 [11.1],

“[u]nder the EPC the filing date of the root application is the only filing date which can be attributed to a divisional application, by way of the legal fiction contained in Article 76(1), second sentence, second half sentence, EPC […]. There is no room under the EPC for a divisional application to have as filing date the date of its actual filing with the EPO.”

As a consequence, as the [patent proprietor] has rightly pointed out, there are only two alternatives for a European patent application filed as a divisional application. Either it is not treated as a divisional application, in which case there are no grant proceedings at all, or it is treated as a divisional application, in which case it can only have the date of filing of the root application. Therefore, it necessarily follows from the fact that the application on which the impugend patent was based was filed as a divisional application that it is entitled to the date of filing of the root application. As a consequence, the root application cannot constitute a novelty-destroying prior art for the impugned patent.

In this respect the case under consideration differs fundamentally from the examination of the validity of a priority claim. The right of priority has the effect that the date of priority counts as the date of filing of the European patent application for the purposes of A 54, paragraphs 2 and 3, and A 60, paragraph 2. If the claimed priority proves invalid, this effect does not occur and the filing date is the actual date of filing.

Moreover, [the EPC] does not provide for an examination of the lawfulness of the correction of the designation of the applicant carried out by the RS in opposition proceedings. A 100 gives an exhaustive list of the grounds for opposition. Futher grounds cannot be invoked against the patent as granted during opposition proceedings.

In principle the grant of the patent cures possible formal errors and deficiencies that have occurred during the grant proceedings, such as a possibly unlawful allowance of a request for a correction pursuant to R 88 EPC 1973. Such deficiencies cannot lead to the revocation of the patent as granted in opposition proceedings, because they do not constitute a legal ground for opposition (cf. Schulte, “Patentgesetz mit EPÜ”, 8th edition, §39 PatG or A 76 EPC, respectively, marginal numbers 78, 79).

Incidentally, the fact that the impugned patent has been amended does not alter [the situation] because in this case also the cut-off effect (Zäsurwirkung) of the act of grant cures possible formal errors and deficiencies that have occurred during the grant proceedings.

This finding is not surprising. It is also to be accepted in other cases - such as the case of a patent which was granted after a request for re-establishment had been allowed pursuant to A 122, although it should not have been allowed - that possible formal errors and deficiencies that have occurred during the examining proceedings are cured by the act of grant and are not examined any more in opposition proceedings (cf. J 22/86).

[2.4] As a consequence, the content of the root application cannot be novelty-destroying for the impugned patent.

The Board then found the claims on file to involve an inventive step and finally dismissed the appeal.

Should you wish to download the whole decision (in German), click here.

The file wrapper can be found here.

NB: The Board also provided a headnote:

A patent application filed as a divisional application can only have the filing date of the root application.

The EPC does not provide for the possibility of examining the lawfulness of a correction of the designation of the applicant carried out by the Receiving Section during opposition proceedings (see point [2.4] of the Reasons).