T 215/11 – Propagation Of Error

In this case the Opposition Division had revoked the patent under consideration on the ground of insufficiency of disclosure.

The case is interesting because page 6 of the application as filed (which was also present in the Druckexemplar) was omitted in the patent as published; this missing page was decisive for the question of sufficiency.

The patent proprietor requested the reinsertion of the page; the opponent objected and pointed out that this would lead to a violation of A 123(3).

The Board accepted the reinsertion. What makes the decision particularly spicy is that after having announced its decision, the Board discovered that the Druckexemplar indeed contained the page, which obviously changes the legal situation.

[2.1] The [patent proprietor] had requested reinstatement initially as a correction of the decision to grant under R 140, then as an amendment to the patent under A 123 in view of G 1/10 [13]. The Board held this amendment to be a fair attempt to overcome the objection of insufficiency of disclosure raised by the respondent during the opposition procedure, R 80 EPC 1973. That objection had been based on the absence in the patent specification of information appearing on page 6 of the description as filed.

Taking into account the fact that in principle amendments of the specification may affect the scope of the patent, A 69, the Board examined the scope of protection of the patent with and without the missing page and found that the restored additional information from page 6 as filed, lines 1 to 10, would at most result in a narrower interpretation of claim 1 as regards the required data collected by or held in, respectively, the second computer. It furthermore found that this same data was also mentioned in the context of the second computers under paragraph [0005] of the patent.

That said, it is simply not apparent to the Board why the re-insertion of the missing page would create any new subject-matter which the skilled person would not have considered to fall under the scope of protection when interpreting the patent in its unamended form.

Therefore, the Board concluded that the reinstatement of missing description page 6 did not extend the scope of protection contrary to A 123(3).

[2.2] The Board notes, by way of obiter dictum, that following the announcement of the decision during the oral proceedings (OPs) the Board has become aware that missing page 6 was in fact originally included in the text of the description on which the examining division based its decision to grant: see the “Druckexemplar” attached to the communication under R 51(4) EPC 1973, dated 14 September 2000.

Page 6 was thus erroneously omitted from the “Druckexemplar” by the EPO upon publication of the specification of the European patent. The correct procedure for dealing with errors of this kind is outlined in EPC Guidelines, H-VI 3 (September 2013), where it is also stated that errors of this kind can be corrected at any time, and the Board sees no reason to disagree. Correction is then effected by way of a corrigendum or reprint of the entire specification, see EPC Guidelines C-V 10 (September 2013), last paragraph. As indicated there only the text on which the decision to grant the patent is based is decisive, i.e. that text is legally binding as regards existence and scope of the patent. As the Druckexemplar did in fact include page 6, and this was the legally binding text, the objections raised by the respondent-opponent under A 100(b) and A 123(3), based solely on the missing page 6, the appellant proprietor’s requests for correction under R 140 or amendment, as well as the ensuing discussion during the OPs before the Board concerning A 123(3)) and the Board’s finding above were from a substantive point of view legally unfounded (not having considered the totality of the relevant facts) and obviously unnecessary.

However, notwithstanding this deficiency, that final decision by the Board has not lead to a different outcome of the appeal than if a corrigendum had been issued, nor has it resulted in any adverse effect or some other unwarranted loss of rights of either party.

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