T 0488/13 - Printing error corrected in opposition

Key points
Auxiliary request 1 was filed during the oral proceedings before the Board in response to Respondent III's objection that the value of 1.8% by weight of ammonia in dependent claim 3 had no basis in the application as filed. " However, said value of 1.8% was present only in the printed version of the granted patent specification, and not in the version accepted by the EPO, the value in the "Druckexemplar" being 1.6%, said finding not being contested by the Respondents. A printing error, which cannot be imputed to the Patentee, should normally be correctable at any time. The proposed amendment effectively corrects such a printing error, so that the proposed amendment is appropriate and necessary. It is also obviously allowable under Articles 123(2) and (3) EPC, see also G 1/10 (OJ EPO 2013, 194, point 13 of the Reasons)." 


EPO T 0488/13 - link

Reasons for the Decision

1. The appeal is admissible.

2. Admissibility of requests

2.1 Respondent III requested that all claim requests submitted by the Appellant on 9 January 2014 should not be admitted into the proceedings as they were late filed, the present main request and auxiliary requests 2 and 3 corresponding to auxiliary requests 1, 5 and 7, respectively, filed on 9 January 2014. Respondent III also submitted that auxiliary request 1 filed during the oral proceedings before the Board should not be admitted on the basis that it was filed at an even later stage of the proceedings.

2.2 The Board notes that the claim requests filed with letter of 9 January 2014 were in direct response to objections raised by the Respondents in their replies to the Appellant's statement setting out the grounds of appeal, more particularly to objections under Article 84 EPC to certain claims filed with said statement. The amendments essentially involved deletion of those claims objected to for lack of clarity from these claim requests, such that the Board holds that the amendments are appropriate. Furthermore, these claim requests were all filed over two years prior to the oral proceedings before the Board, leaving the other parties sufficient time to consider them. 

Auxiliary request 1 was filed during the oral proceedings before the Board in response to Respondent III's objection raised two days before said proceedings to the lack of support in the application documents as filed for the value of 1.8% by weight of ammonia in dependent claim 3 of auxiliary request 3 filed with letter 9 January 2014. However, said value of 1.8% was present only in the printed version of the granted patent specification, and not in the version accepted by the EPO, the value in the "Druckexemplar" being 1.6%, said finding not being contested by the Respondents. A printing error, which cannot be imputed to the Patentee, should normally be correctable at any time. The proposed amendment effectively corrects such a printing error, so that the proposed amendment is appropriate and necessary. It is also obviously allowable under Articles 123(2) and (3) EPC, see also G 1/10 (OJ EPO 2013, 194, point 13 of the Reasons).

2.3 For these reasons the Board admits the main request and auxiliary requests 1 to 3 into the proceedings.

Main request and auxiliary request 1

3. Novelty

3.1 During the written procedure, Respondent III submitted that sufficient evidence had been provided before the Opposition Division to prove the prior use of the product Londacolor Crème-Haarfarbe. However, it relied only on its previous submissions before the first instance, without providing any reasons as to why the contested decision was wrong in this respect. During the oral proceedings before the Board, no objections were raised against the novelty of the subject-matter of the claims of the main request or auxiliary request 1.

3.2 The Board holds that in the absence of arguments as to why the contested decision was wrong with respect to the prior use not being considered to be state of the art, the objection to lack of novelty raised in writing was not reasoned. In any case, the alleged prior use was based on a product which allegedly contained 0.5% by weight of sodium metasilicate (see page 7 of contested decision), such that said prior use is prima facie irrelevant with respect to the novelty of the subject-matter of the claims before the Board, which all relate to dyeing compositions comprising at least 1% by weight of sodium metasilicate, the claims of the main request before the Opposition Division not specifying an amount of sodium metasilicate.

3.3 The Board thus holds that the subject-matter of both the main request and auxiliary request 1 is novel.

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4.9 As a result, the Appellant's main request is not allowable as the subject-matter of claim 1 thereof lacks inventive step pursuant to Article 56 EPC.

Auxiliary request 1

5. Amendments

5.1 Claim 1 of auxiliary request 1 is based on original claims 1 and 6, which correspond to granted claims 1 and 6, respectively, the scope of protection being thereby restricted.

5.2 Dependent claims 2 to 16 are based on original claims 7 to 9 and 11 to 22, respectively, which correspond to granted claims 7 to 9 and 11 to 22, whereby the value of 1.8% by weight of ammonia in claim 8 of the printed version of the granted patent specification has been in effect corrected in corresponding dependent claim 3 to the value of 1.6, as present in claim 8 of the version accepted by the EPO, as explained in point 2.2 above. The Respondents did not submit any substantive arguments against the possibility of such a correction.

5.3 The requirements of Article 123(2) and (3) EPC are thus satisfied.

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7. Clarity

7.1 The Respondents II and III argued that the subject-matter of at least claim 3 of auxiliary request 1 was unclear, in view of said claim requiring that the compositions simultaneously comprised at most 1.6%, and preferably at least 1.2% by weight, of ammonia, unclarity arising because the latter preferred value was broader than the former.

7.2 Article 84 EPC is, however, not a ground for opposition, no substantive amendments having been made to dependent claim 3, which corresponds to granted claim 8, apart from the correction of a printing error (see point 5.2 above). Hence, the Board has no power to examine this claim for clarity (G 3/14, OJ EPO 2015, A102, see catchword and order).

7.3 The Board therefore rejects the Respondents' arguments regarding lack of clarity.