Monday, 30 July 2012

G 1/10 – Unavailable

Here is the latest decision by the Enlarged Board, on corrections under R 140.

The underlying case was as follows:

The opposition (filed on September 10, 2004) had been based on the sole ground of added subject-matter (A 100(c)), the only argument being that in claim 1 of the patent the feature
“means for initiating (56) a command related to a position of the device data”
was not disclosed in the application as filed. The proprietor’s reply of 27 April 2005 argued that this resulted from a typographical error made when amending claim 1 during the pre-grant procedure and that the feature should read
“means for initiating (56) a command related to a portion of the device data”.
The word “position” should thus read “portion”.

On December 27, 2005, the proprietor requested that the opposition proceedings be stayed and that the case be remanded to the Examining Division (ED) for re-issuance of the granted patent after correction under R 89 EPC 1973. On November 2, 2006 a formalities officer acting for the Opposition Division (OD) issued a communication stating that the case was referred to the ED and that examination of the opposition was adjourned pending the final decision of the ED.

The opponent filed an appeal which was rejected as inadmissible by Board 3.5.03 in its decision T 165/07 of November 23, 2007. The Board considered that the formalities officer’s communication did not constitute a decision within the meaning of A 106(1) EPC 1973 and that the OD had not yet taken a decision on the proprietor’s request to stay the opposition proceedings and to remit the case to the examination division for a decision on the request for correction under R 89 EPC 1973.

On March 12, 2009 the OD took the interlocutory decision to stay opposition proceedings, to remit the case to the ED for a decision on the request for correction under R 140 (which corresponds to R 89 EPC 1973), and to allow a separate appeal against this decision. The opponent appealed against that decision.

In 2010, Board 3.5.03 (case T 1145/09) referred the following questions to the Enlarged Board (EBA) :
1. Is a patent proprietor’s request for correction of the grant decision under R 140 which was filed after the initiation of opposition proceedings admissible? In particular, should the absence of a time limit in R 140 be interpreted such that a correction under R 140 of errors in decisions can be made at any time?

2. If such a request is considered to be admissible, does the ED have to decide on this request in ex parte proceedings in a binding manner so that the OD is precluded from examining whether the correction decision amounts to an unallowable amendment of the granted patent?
The answer of the EBA is very straightforward:

Since R 140 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.

If you want to know the reasons for the answer, here we go:

[1] The EBA agrees with the referring board’s decision […] that the referred questions relate to a decisive issue in the case before it concerning the interpretation of R 140, the delimitation of the respective competences of the ED and OD, and the possible intercalation of ex parte and inter partes proceedings. The procedural provisions of the EPC are silent on these issues and the case law of the boards of appeal is at least partly divergent […]. Thus the present referral is admissible as it serves both the purposes mentioned in A 112(1)(a), namely ensuring uniform application of the law and addressing points of law of fundamental importance.

[2] R 140 reads:
“In decisions of the EPO, only linguistic errors, errors of transcription and obvious mistakes may be corrected.”
This is exactly the same wording as the previous R 89 EPC 1973. Accordingly, while both are referred to herein, no distinction is made between the present and previous rules or between the case law relating to one or other of them.

[3] The referred questions use the expression “request for correction of the grant decision under R 140” and therefore this decision is not concerned with corrections of any other decisions. Further, even in the context of corrections of grant decisions, it is clear that the referring decision is concerned only with the text of patents which are treated as an integral part of grant decisions by reason of being referred to in communications under R 71(3) (see T 850/95 [2]). Accordingly this decision is further confined to corrections of patents themselves - to the description, claims and drawings (often called the “patent documents”). Such patent documents have the particular characteristics that they are not only supplied by a patent applicant but also that they may only be the subject of a decision to grant if approved by the applicant (see A 113(2) and R 71 EPC and point [10] below). The EBA’s decision is therefore limited to corrections within grant decisions of the description, claims and drawings and references in these reasons to “patent corrections” or “correcting patents” are also so limited.

[4] It also follows from this limitation of the present reasons to such patent corrections that, among other possible corrections to grant decisions, the EBA is not here concerned with corrections to bibliographic data and need not therefore comment on situations such as that described in the submissions of the second amicus curiae […]. R 71(3) has been amended with effect from 1 April 2012 (OJ EPO 2010, 637) so as to extend its scope to bibliographic data which is also to be sent to the applicant (thereby codifying the EPO’s previous practice). Since both the text in which the ED intends to grant the patent and the related bibliographic data are mentioned in the amended R 71(3) as separate entities, it is clear that under the amended Rule bibliographic data still do not form part of the text of the patent.(Subsequent references to R 71 are to the Rule prior to that amendment).

[5] As the EBA observed in decision G 1/97 [3(c)] by reference to the travaux préparatoires, legal certainty and the prevention of adverse effects on third parties are the reasons for the narrow ambit of allowable corrections under R 140 (then R 89 EPC 1973):
“The travaux préparatoires concerning R 89 also show that the legislator was particularly concerned with the protection of third parties. This is evident from the history of R 89, which emerged from a draft version of A 159(a) (see BR/49 d/70, page 9) incorporated in the draft Implementing Regulations of April 1972 under A 91(1) (see BR/185 d/72) which deals with the correction of procedural errors as long as this does not adversely affect the interests of, inter alia, third parties. Finally, it was decided that R 89 should be limited to its present, narrow wording, which rules out any possibility of such adverse effect.”
In the EBA’s judgment R 140 is not available to correct patents. This is consistent with the wish to rule out any possibility of adverse effects as expressed in its earlier opinion cited above. There are several reasons, all of which reflect the need for legal certainty and the protection of third parties, why this should be so (see points [6-8] below) while patent proprietors none the less have adequate remedies available, both before and after grant, to ensure that the text of their patents is correct (see points [9-13] below). The non-availability of R 140 to correct patents means that the EBA, while agreeing with the statement in decision T 850/95 […] that patent documents referred to in a grant decision become an integral part of the decision, does not agree with the subsequent conclusion that errors in those documents may subsequently be corrected under R 140 (or R 89 EPC 1973 which was in effect at the time of decision T 850/95 – see OJ EPO 1996, 455, point [2, final sentence]).

[6] Legal certainty is served by the grant decision establishing a definitive text of a patent for the purposes of any subsequent proceedings, whether at national or EPO level. As from its grant, a European patent ceases to be within the jurisdiction of the EPO and becomes, subject only to the possibility of later EPO proceedings by way of opposition or limitation, a bundle of national patents each of which falls within the exclusive jurisdiction of a designated Contracting State (see A 2(2)).

One necessary corollary of the decision to grant is that the EPO is no longer competent to deal with any further matters relating to the text of the patent (see decision T 777/97 [3]). A further corollary of the grant decision is that, according to A 70(1) and subject to A 70(3), the courts and other authorities of each designated Contracting State are entitled, indeed required, to take the text of the granted patent as the basis of any national proceedings. Since, apart from any later opposition or limitation proceedings, the patent is then subject to the exclusive jurisdiction of those Contracting States, there is no reason why any subsequent decision of the EPO (other than in opposition or limitation proceedings) to change the text of the granted patent should be recognised in those jurisdictions. Since, territorial scope apart, the powers of national courts and the OD correspond to each other (see A 100 and A 138), it would follow that the text of an opposed patent should also be in the form as granted.

[7] As regards third parties, including potential opponents, none of the concerns with the present practice expressed in the President’s comments and, to a lesser extent, in the referring decision can arise if there is no possibility of recourse to R 140 to correct patents […]. Thus there will be no delay in opposition proceedings caused by requests under R 140 and no decisions on corrections not subject to appeal by an opponent. There will be no adverse effects on third parties who, relying on a patent as granted, undertake activities which later infringe a patent as corrected. There will be no would-be opponents who, relying on the granted claims, decide not to file an opposition only to find that, after correction, they are threatened by the patent but deprived of the possibility of opposition. And there will be no question of denying the principle of equal treatment of parties through the possibility for a patentee to turn inter partes proceedings into ex parte proceedings on an issue – the content of the patent – which is decisive for an opposition.

[8] Further, the EBA considers that the absence of a possibility to request patent corrections under R 140 should not prejudice patent proprietors. If on the one hand a correction would be obvious (as it should be to satisfy R 140) then, as the respondent proprietor submitted […], 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. If on the other hand a correction would be less than immediately obvious, then it should not in any event be allowed under R 140 which is confined to correction of “obvious mistakes”.

[9] In the EBA’s judgment a patent applicant (or, subsequently, a patent proprietor) has adequate means at his disposal to ensure his patent as granted is in the exact form he wants it to be without any need to invoke R 140. Should an applicant, at any stage up to and including the final approval by him of the text of his patent, make a mistake (or overlook a mistake he has previously made) in a document he has filed – for example, he mis-spells a word or uses an incorrect word in an amended claim which he files in the course of examination proceedings – then before grant that mistake can be corrected under R 139 on request.

[10] Further, a patent applicant is obliged to approve the text in which his patent is to be granted (see A 97(1) and R 71(3)(4) and (5)). He must be informed of the text in which the ED intends to grant a patent and is deemed to approve that text if he proceeds to pay the requisite fees and file translated claims within a period of four months (see R 71(3)). Otherwise he must within that four month period request amendments or corrections (see R 71(4), which specifically mentions “correction of errors under R 139”); and there is also a procedure for further amendment and approval in the event those first amendments or corrections are not consented to by the ED (see R 71(5)).

[11] If, given the opportunity to check the patent text before approving it, an applicant does not draw any errors to the attention of the ED and thus ensure his approval is limited to the correct text, then the responsibility for any errors remaining in that text after grant should be his alone, whether the error was made (or introduced) by him or by the ED.

Thus, for example, the responsibility for a mis-spelt or incorrect word in an amended claim in the approved text is from this point in time entirely that of the patent applicant and it would be illogical thereafter to impute that mistake to the ED – by suggesting the ED did not intend to make a decision which in fact included the very text approved by the applicant himself – in order to bring the applicant’s own error within the ambit of R 140. The President’s comments […] referred to the practice of some applicants who turn to R 140 to request the correction of obvious errors when this is no longer possible under R 139. That practice suggests some patent applicants seek to rely on R 140 to “tidy up” their own errors by the fiction of ascribing them to the ED. As epi correctly observed […], R 140 is intended for correcting errors in decisions of the EPO and not errors in documents filed by a patent applicant or proprietor. It would follow from the non-availability of R 140 to correct patents that this practice should cease.

[12] If however the ED proceeds to make a decision to grant which contains an error subsequently made by it, so that the granted text is not that approved by the proprietor, then the proprietor is adversely affected by that decision and is entitled to appeal.

If, for example, the text of the patent which is the subject of the decision to grant includes an amended claim which has after approval been erroneously changed by the ED, then the patent proprietor can demonstrate that the ED did not grant his patent with the text approved by him. It must then follow that the ED failed to observe A 113(2) and the appeal should succeed by allowing interlocutory revision and reimbursement of the appeal fee as being equitable in view of the ED’s mistake (see respectively A 109(1) and R 103(1)(a)).

[13] The referring decision relates to opposition proceedings. The EBA considers R 140 is not available for correcting patents, including during opposition or limitation proceedings. 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 A 123.

Being a request for an amendment under A 123 and not a request for a correction under R 140, and thus a normal incident of the opposition or limitation proceedings, no question arises as to which body is competent to deal with the request. In the case of opposition proceedings, the amendment will be considered and decided by the OD (see A 19(1) and A 100), in the case of limitation proceedings by the ED (R 91 and R 95(2)(3)(4)).

[14] The first referred question asked whether a patent proprietor’s request for correction of the grant decision under R 140 which was filed after the initiation of opposition proceedings is admissible. Since the EBA considers that R 140 is not available to correct granted patents, it follows that a request for such a correction under R 140 filed is inadmissible.

[15] The subsidiary part of the first referred question asked whether, in particular, the absence of a time limit in R 140 should be interpreted such that a correction under R 140 of errors in decisions can be made at any time. It follows from the EBA’s opinion that, as regards corrections of patents, R 140 is not available at all.

[16] It was a condition precedent of the second referred question that a request for correction of a grant decision under R 140 filed after the initiation of opposition proceedings should be considered admissible. Since, as stated above, the EBA does not consider such a request admissible at all, no answer to the second referred question is required. […]

For these reasons, it is decided that:

1. Since R 140 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.

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

The file wrapper can be found here.


pat-agoni-a said...

So now the OD will have to decide whether the amendment from "position" to "portion" in the feature "means for initiating a command related to a position of the device data" is allowable under A 123(2) and (3). It seems pretty clear that this decision will be followed by an appeal.

I would guess that the patent will not survive, as violating A 123(3).

A pretty harsh fate for a misspelling ...

Anonymous said...

Except that, of course, the scope of protection conferred which is referred to in Art 123(3) EPC is that of Art 69(1) EPC. Art 69(1) EPC, second sentence, and the Protocol thereto, makes a good basis for arguing that Art 123(3) EPC is satisfied by the amendment, since, if the error is truly an obvious mistake, the SP will recognise the mistake, refer to the rest of the specification, and derive the true meaning of the claims. If he won't do so, then the error will not have been a corrigible one in the first place. Fairness to all, I think.

Myshkin said...

Do others agree that this decision makes it sufficiently clear that the text of a patent can not be corrected under Rule 139, either? See e.g. T 1857/09 (and the comments below it). In that case the proprietor attempted to use R. 139 to amend the text of the patent as granted, and the Board seemed to have been prepared to allow the request (but considered there was no obvious error in the sense of R. 139). For another case see T 2011/10.

(Correction of the text of a patent should not be confused with correction of the application documents during opposition. The former would get around Art. 123(3), the latter not.)

Regarding the discussion under the blogpost on T 1857/09, G 1/10, point 3, confirms that the text of a patent forms part of the decision to grant.

What I miss a bit in G 1/10 is the clear reasoning that the EBA usually provides. The impression I get is that the EBA (very rightly) considered it should put an immediate stop to a (probably short but) embarrassing series of corrections under R. 140 by EDs that were simply wrong (and lead to cases such as T 1349/08). The EBA simply states in the second paragraph of point 5 that in its judgement R. 140 is not available to correct patents. It then explains that this outcome makes sense and has desirable consequences. Fine with me, but that does not explain why R. 140, that according to its clear wording applies to all decisions, does not apply to a particular part of a decision to grant. That the patent ceases to be within the jurisdiction of the EPO does not convince me. After all, appeals are still possible as well (in case the granted text differs from the agreed text). Maybe I haven't read G 1/10 carefully enough, though.

I would reason that the text of a patent is part of the substance of the decision to grant, so that it can only be changed by an appeal and not by a correction under R. 140. After all, it is the text of the patent that determines the rights conferred on the proprietor. While it is true that a correction of a typographical error somewhere on page 20 of the description will probably not affect these rights, this is already a substantive issue. The text of a patent as an integral part of the decision to grant cannot be compared with e.g. the reasons in a decision to refuse.

With point 8 I completely agree.

There are quite a few decisions of the Board to correct the text specified in orders to grant. I would say those have to stop now (certainly if my reasoning is the correct one).

Myshkin said...

Regarding the (im)possibility of using R. 139 EPC to correct the text of a granted patent (e.g. during opposition) as discussed in the comments below the blogpost on T 1857/09, I just noticed decision T 1514/09:
"1.1 According to Rule 140 EPC, in decisions of the European Patent Office, only linguistic errors, errors of transcription and obvious mistakes may be corrected. The Board has interpreted the appellants' request for a correction under Rule 139 EPC as a request for correction pursuant to Rule 140 EPC. The appellants have no legitimate interest in a correction under Rule 139 because such correction would have no legal effect. It could only lead to a correction of the application documents but not to an automatic correction of the decision to grant the patent. See the discussion in J 23/03, point 2.2."
which agrees with my position. J 23/03 is indeed to the point, even though it is about destination states:
"Steht fest, welches eingereichte Dokument berichtigt werden soll, und wird ein Fehler im Sinn der Regel 88 EPÜ bejaht, kann eine Berichtigung nur dazu führen, daß dieses Dokument so angesehen wird, als wenn es von Anfang an ohne diesen Fehler eingereicht worden wäre. Dies führt aber nicht dazu, daß sich durch die Berichtigung der Einreichungsunterlagen eine vorher ergangene Entscheidung inhaltlich ändert, sondern lediglich dazu, daß diese Entscheidung durch die retroaktive Wirkung einer Berichtigung nach Regel 88 EPÜ sachlich falsch wird. Sie kann von dem Organ, das sie erlassen hat, wegen ihrer Bindungswirkung im Regelfall nicht mehr geändert werden. Vielmehr kann die durch die Berichtigung inhaltlich unrichtig gewordene Entscheidung nur noch auf Grund einer Sachprüfung im Rahmen einer zulässigen Beschwerde geändert werden."
I believe the same follows from J 3/01.

The Board in T 1514/09 then considers the request under R. 140 and finds it not allowable. This is of course wrong: according to G 1/10 the request is inadmissible. I wonder why the decision does not mention (then still pending) G 1/10 at all, not to mention all the hoops one would have to jump through to make us believe that this Board (and not the ED) was competent to decide on the request...

ludefu said...

This decisions leads me to question if there is a conflict between EPO and national law.

If the European Patent is, after grant, no longer within the jurisdiction of the EPO, could the patent proprietor request correction in national proceedings? If during opposition, while the patent is subject to EPO proceedings, a correction of obvious mistakes is not allowed, would this proceedings be in conflict with national law?

Myshkin said...

Note that "while the patent is subject to EPO proceedings" is probably irrelevant for the question whether R. 139 EPC can be applied. G 1/10 decided that R. 139 EPC can never be used to correct the text of a granted patent.

In case a provision of national law somehow permits a change of the text of a patent, there is Art. 138(1)(d) EPC which states that the national patent may be revoked if its scope of protection has been extended.

The reason that an applicant would want to have the text of the patent corrected under R. 139 EPC is that the decision to correct would not just change the text of the patent (at some point in time after the grant of the patent, thereby potentially extending its scope after grant) but would retroactively change the decision to grant. The corrected patent would be considered to have been granted in its corrected form. There would be no danger of the correction being an extension of its scope after grant.

Of course one could imagine a provision of national law stating that a national body can correct the EPO's decision to grant. I would say such a provision of national law would conflict with the spirit of the EPC and would bring the country in violation of its international obligations. (On the other hand, it seems that the EPC in relation to national law is mostly concerned with ensuring that national law treats European patents at least as good as national patents. From the point of view of the EPC it might actually be OK for national law to even grant rights on the basis of applications that were refused by the EPO.)