Correcting the Text of a Published Patent
Luigi Petrucci (Administrator in Directorate Patent Procedures Management at the EPO), Munich
Decision G1/10 of the Enlarged Board of Appeal (OJ 2013, 194) has clarified that a request under Rule 140 EPC is not admissible for correcting the text of a patent in a decision to grant, irrespective of whether the error was made (or introduced) by the applicant or by the Examining Division (G1/10, Reasons, point 11).
Indeed, if a correction to the text of a patent is obvious as required by Rule 140 EPC then there can be no surprise and no adverse effect on the proprietor or anyone else, because all concerned read the patent as if corrected, and therefore an actual correction is not necessary. If, on the other hand a correction is less than immediately obvious, then it cannot be allowed under Rule 140 EPC (see G1/10, Reasons, point 8).
Under Rule 140 EPC a decision to grant can be amended only from the day it is handed over to the EPO's internal postal service for transmittal to the applicant (see G 12/91 and T 798/95): this date is shown at the bottom right-hand corner of Form 2006 - “Decision to grant a European patent pursuant to Art. 97(1) EPC“ (Guidelines H-II, 2.6, last paragraph).
Before that day any request for correction of the Druckexemplar, i.e. of the text transmitted to the applicant with the communication under Rule 71(3) (Form 2004), will be treated either as a request for correction under Rule 139 or as a submission of new amendments, even after the approval of the applicant has been received by the EPO. However, the text of a published patent can still be corrected in the following cases:
Errors in publication
Mistakes in the specification of a European patent arising in the course of its production have no effect on the content of the patent granted. For this, only the text on which the decision to grant the patent is based is decisive (Guidelines C-V, 10, last paragraph).
Hence, if the text of the published specification (B-publication) differs from the Druckexemplar approved by the applicant, the text of the specification can always be brought into line with the latter (Guidelines H-VI, 4, first paragraph; see also T 215/11).
As indicated in Guidelines C-V, 1.1, amendments and corrections made by the Examining Division are indicated in the Druckexemplar using standard marks (the standard marks used by the electronic tools are listed in guidelines C-V, Annex). Furthermore, all the amendments and corrections will be listed on Form 2004W or 2004C accompanying the Druckexemplar.
Therefore, if the text of the B-publication differs from the text of the application as filed/published, and this change was:
- not introduced by the applicant;
- not indicated by standard marks in the Druckexemplar; and
- not listed on Form 2004;
then this difference is a so-called formatting/editing error and it can be corrected by the EPO of its own motion or at the request of the patent proprietor at any time (Guidelines H-VI, 4, paragraph before last).
It does not matter if this discrepancy was introduced by the e-drex (“electronic Druckexemplar”), or by the OCR process, or any other electronic tool.
The Office arranges for the correction to be made public as soon as any publication and/or formatting/editing error is discovered in a specification. This is done by means of a note in the European Patent Bulletin and publication of a corrigendum (see Rule 143(2) and the Decision of the President of the EPO dated 14 October 2009, OJ EPO 2009, 598, Art. 1, point 2).
A decision to grant can be appealed if the granted text is not that approved by the proprietor: in this case the proprietor is adversely affected by that decision and is entitled to appeal (G 1/10, point 12 of the reasons).
This can happen in four cases:
- the EPO did not dispatch to the applicant any communication under Rule 71(3) EPC before dispatching the decision to grant;
- the Examining Division amended the Druckexemplar of its own motion after the approval by the applicant, and no further communication under Rule 71(3) EPC was dispatched before dispatching the decision to grant;
- the EPO ignored the amendments filed by the applicant in reply to the communication under Rule 71(3) EPC and proceeded to dispatch the decision to grant;
- the decision to grant does not (fully) reflect the amendments filed by the applicant in reply to the communication under Rule 71(3) EPC together with a Rule 71(3) waiver.
A decision to grant can also be appealed when there is a discrepancy in the list of documents on Form 2004 and the documents contained in the Druckexemplar (Guidelines H-VI, 4, last paragraph); for example:
- Form 2004 indicates page 1-10 of the description filed with letter dated xx-xx-xxxx, while the Druckexemplar contains pages 1-10 as filed; or
- Form 2004 indicates page 5 of the description as filed and in the Druckexemplar an amendment indicated by standard marks (and hence introduced by the Examining Division) is present.
The appeal can be filed within two months of notification of the decision to grant, i.e. two months from the date of dispatch plus ten days for delivery as specified by either Rule 126(2) EPC or Rule 127(2) EPC.
In all the above cases, the first instance will allow interlocutory revision under Art. 109 EPC and reimburse the appeal fee: the examination proceedings are re-opened and a new communication under Rule 71(3) EPC is dispatched to the applicant.
In any other case the first instance will forward the appeal to the Boards of Appeal.
Approval by the applicant
When compared with the EPO practice before G1/10, the above exceptions allow only for limited corrections of a published patent.
This makes the approval by the applicant an essential step in the process of publishing a patent in the correct text.
While, in view of the present EPO practice as described above, it is not necessary for the applicant to check the Druckexemplar word-by-word, it is advised to check at least the following when receiving a communication under Rule 71(3) EPC:
- that the list of documents on Form 2004 corresponds to the documents the applicant expects to form the text of the patent;
- that the documents contained in the Druckexemplar correspond to the documents listed on Form 2004; and that
- the text of the amendments by the Examining Division listed in Form 2004 and indicated with standard marks in the Druckexemplar.
Effect of a request for correction of the text of the patent under Rule 140 EPC on post-grant proceedings in front of the EPO
The competence to correct errors lies with the body which took the decision: hence, for the decision to grant it lies with the Examining Division (see H-VI, 3.1, last paragraph).
However, since Rule 140 EPC is not available to correct the text of a granted patent, a request for such a correction under Rule 140 EPC is inadmissible independently of when it is filed (G1/10, Reasons, points 14 and 15).
Therefore, if a request for correction under Rule 140 of the text of a granted patent is filed by the proprietor during opposition or limitation proceedings, these proceedings will not be adjourned to wait for the decision of the Examining Division.
In case the request of correction under Rule 140 concerns bibliographic data, then the opposition or limitation proceedings will be adjourned until the Examining Division takes a decision on the matter.
Correction of the text of a granted patent during post-grant proceedings in front of the EPO
An obvious error introduced by either the applicant or the Examining Division in the text of a granted patent can, under certain conditions, be corrected during post-grant proceedings in front of the EPO (Guidelines H-VI, 3.1, paragraph 5).
A submission by the proprietor of an amended specification containing only the correction of an obvious error will not be admitted either in opposition or limitation proceedings:
- in opposition proceedings because the amendment does not fulfil the requirements of Rule 80 EPC;
- in limitation proceedings because the amendment does not fulfil the requirements of Rule 95(2) EPC.
On the other hand, in opposition, if the proprietor files an amended specification fulfilling the requirements of Rule 80 EPC, then he can request the correction of the obvious error under Rule 139 EPC (see T 657/11). This request for correction will be dealt with by the Opposition Division (Guidelines H-VI, 2.1, last paragraph) according to the instructions contained in Guidelines H-VI, 2.2 – 2.2.2.
In an analogous manner, if an amended set of claims fulfilling the requirements of Rule 95(2) is filed, obvious errors contained in these claims can be corrected under Rule 139 EPC (see Guidelines D-X, 4.3, last paragraph). In this context, it is to be kept in mind that the limitation of a dependent claim only, without any independent claim being limited, is acceptable (see Guidelines D-X, 4.3, third paragraph).