Enlarged Board of Appeal decision issues on correction of errors in European patents

The European Patent Office (EPO) has issued the latest decision from its highest authority, the Enlarged Board of Appeal (EBA). This decision, G1/10, considered when Rule 140 EPC could validly be used and in particular whether this provision relating to the correction of errors in EPO decisions could be applied to granted patents.

Rule 140 EPC states that “In decisions of the European Patent Office, only linguistic errors, errors of transcription and obvious mistakes may be corrected.” The present referral to the EBA arose because a patentee tried to use this provision to deal with a typographical error that had been introduced into the text of claim 1 of his patent during the pre-grant proceedings, by arguing that there was an error in the EPO’s decision to grant a patent that could be corrected under Rule 140 EPC.

The error in claim 1 of the patent was a reference to “means for initiating (56) a command related to the position of the device data”, when the claim should in fact have read “means for initiating (56) a command related to the portion of the device data”.

The error came to light when an opposition was filed against the patent, with the opposition being based on the sole ground that the patent contained added subject matter. At that stage the patentee requested that the opposition proceedings were stayed and the case be remitted to the Examining Division for correction of the grant decision using Rule 140 EPC. Under EPO case law T850/95, because the decision to grant specifically refers to the documents which form the text of the granted patent, the patent specification is deemed to be an integral part of the decision to grant. Therefore the error in claim 1 was, in effect, an error in the decision to grant. Rule 140 EPC does not include a time limit and therefore it was possible for the patentee to argue that a correction of errors in decisions under Rule 140 EPC could be made at any time.

Due to the fact that there was not clear and consistent case law giving guidance as to whether Rule 140 EPC could be used to correct an EPO decision at any time, including after the initiation of opposition proceedings, a reference was made to the EBA for a binding decision to be made on this point.

The EBA noted that a patent applicant is provided with opportunities to correct errors in the patent specification during examination and is also given the opportunity to approve the text of the patent before grant. Therefore the responsibility for a mis-spelt word or incorrect word in an amended claim in the approved text lay with the applicant. The EBA noted that it would, of course, be a different situation if the decision to grant contained an error subsequently made by the Examining Division, such that the granted text was not the same as had been approved by the applicant. However, in that case the rectification of the situation should be by an appeal of the decision to grant, as the Examining Division would not have followed Article 113(2) EPC in providing a granted text in a form that had not been approved by the applicant.

Furthermore, the EBA noted that at grant the European patent becomes a bundle of national patents and therefore is not within the jurisdiction of the EPO any more.  Other than in opposition and limitation proceedings, the EPO is no longer competent to deal with further matters relating to the text of the patent.

The EBA stressed that the option is always open to a patentee to seek to amend its patent during opposition or limitation proceedings. Such an amendment would have to satisfy all the usual legal requirements for amendments, such as not adding subject matter and not extending the scope of protection of the granted patent.

Therefore whilst the EBA confirmed that the patent specification was an integral part of the decision to grant, it did not agree that Rule 140 EPC could be used to correct errors in the text of the patent specification for granted patents. It concluded that Rule 140 EPC is not available at all for the correction of granted patents.

Therefore the EBA decision has invalidated the practice of patentees trying to use Rule 140 EPC to “tidy up” errors in patent documents that they have submitted pre-grant.