T 2051/10 – No Mistake

In this case the patent proprietor filed amended claims directed at a rinse aid (Klarspülmitel) in which one particular hydrocarbon radical was “optionally” substituted by hydroxyl groups. This amendment was said to be a correction; the Druckexemplar was filed as supporting evidence.

The Board did not endorse this approach.

*** Translation of the German original ***

[2] The [patent proprietor] has invoked an erroneous discrepancy of the wording of claim 1 as granted with respect to the text of the Druckexemplar and has requested a “correction” of this discrepancy without indicating any corresponding legal basis. The requested “correction” has already been carried out in claim 1 according to the main request and the auxiliary requests 1 to 3 and 5.

[2.1] However, neither R 139 nor R 140 allow for a “correction” of the granted patent as desired by the [patent proprietor] (see G 1/10 [order, as well as point 1 and points 10 and 11 of the reasons in connection with point VII.2 of the summary of facts and submissions]. This notwithstanding, the Board notes the following in respect of the corresponding submissions of the [patent proprietor]:

[2.1.1] According to claim 1 of the Druckexemplar sent together with the communication pursuant to R 71(3) dated December 14, 2007, including pages 27 to 29 (claims) dated November 19, 2007, the radical R² is only “optionally” substituted by 1 to 5 hydroxyl groups.

[2.1.2] In response to said communication the applicant has, of its own motion, filed, in a letter dated March 17, 2008, new claims in the three official languages. Claim 1 (in all official languages) was inter alia amended, with respect to the version contained in the Druckexemplar, in that the radical R² now is - mandatorily - substituted “by 1, 2, 3, 4 or 5 hydroxyl groups”.

[2.1.3] In a short communication of the Examining Division dated April 9, 2008, the Office informed the applicant that its request had been granted and that the documents had been amended by replacing [the pages on file] by the amended pages.

[2.1.4] Thus [the Board] does not understand why the patent specification EP 1 509 588 B1 is said to contain an “error”.

[2.2] Therefore, in what follows the Board treats even the requests claim 1 of which contains the amendment which has been referred to as “correction” by the [patent proprietor] as “normal requests” for an amendment pursuant to A 123(1) (cf. G 1/10 [13]).

Obviously, all the “corrected” requests where then dismissed based on a violation of A 123(3).

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