T 1296/14 - Correcting priority in opposition

Key points

• The OD had refused a request of the Patent Proprietor to correct the priority claim during opposition under Rule 139 EPC. Already during the PCT stage, WIPO had noted a discrepancy between the date and the number of the claimed priority. However, instead of the number, the date was corrected, such that priority was claimed from an incorrect application. 
• The Board does not allow the requested correction of the priority claim, because, applying J 6/91, neither EPO nor WIPO is partially responsible, and the interest of the public would be affected. 
• The Board " As a consequence, if a correction of the priority data was accepted by the Board, this would have the effect of shifting the protection available from the European patent by one full year and clearly affect the interest of the public. Even assuming that the correction only involves one day, still the interest of the public is affected." As a comment, I am not certain what the Board is referring to. The patent term is calculated from the filing date.

T 1296/14 - link

Reasons for the Decision

1. Request for correction of the Priority

1.1 The Appellant-Patent Proprietor requests the correction of the priority data by application of Rule 139 EPC because of a mistake made in the indication of the priority claim.

1.2 There is indeed a discrepancy with regard to the priority claim in the application as filed PCT/US02/37993 (WO application of the opposed patent) [on 27 November 2002] as it refers to a priority application numbered US 60/334,220 (i.e. the toy priority application having a filing date of 29 November 2001) and a priority date of 28 November 2001. There is also a discrepancy between the cover sheet (referring to the date of 29 November 2001) and the first page of the description (referring to the date of 28 November 2001) of the WO application published as WO-A-03/045710.

At least the first of these discrepancies was noted by WIPO which sent to the Applicant (Patent Proprietor) an official invitation to correct the priority claim of PCT/US02/37993 in application of Rule 26bis2 (a) (iii) PCT (see Annex C).

In response to this official invitation, the Patent Proprietor, rather than changing the incorrect number US 60/334 220 to the correct US 60/334 200, requested through its US patent attorney that the (correct) priority date 28 November 2001 be changed to the (incorrect) 29 November 2001.

1.3 J 6/91 summarises the conditions which might allow for a correction of the priority data when no warning was published together with the WO application:

(i) the EPO was partly responsible for the fact that no warning was published; and/or
(ii) the interest of the public was not seriously affected; for example, the mistake was obvious on the face of the application as published; or the public was otherwise informed about the full scope of protection sought by the applicant.

1.3.1 After the issue by WIPO of the notification dated 9 May 2003 confirming that the priority for the application had been amended to US 60/334,220 filed on 29 November 2001 (see Annex D), the public could only assume that the mistake was now corrected. Thus, the argument of the Patent Proprietor that its true intention was to claim priority from US 60/334,200 with a priority date of 28 November 2001, is not consistent with the Patent Proprietor's actions before the WIPO.

1.3.2 The Appellant-Patent Proprietor attempts to shift at least a part of the responsibility for the mistake to the WIPO. However, the WIPO clearly informed the Applicant about an inconsistency in the indication in the priority claim when compared with the corresponding indication appearing in the priority document. In spite of this, the Applicant maintained the wrong priority date of 29 November 2001. Moreover, neither the WIPO nor the EPO in the regional phase have an obligation to examine the content of the priority document. They cannot be rendered responsible for the fact that the toy priority application was not relevant to a bicycle rim.

1.3.3 At the date of publication of the WO-application, even if the public had noticed the discrepancy between the cover sheet and the first page of the description of the WO application and would look for the correct priority data, it could not make any correction and determine the true intention of the Applicant on the basis of the available information. At that time, it was also not possible for the public to access to the right priority documents (Annex A), so that it could not have been informed about the full scope of protection sought by the Applicant (Patent Proprietor).

1.3.4 Of course, the public could also have noticed by file inspection that the toy priority application was not relevant to a bicycle rim. However, after a check of the priority data, the public had no possibility to be otherwise informed about the full scope of protection sought by the Applicant/Patent Proprietor and could only conclude that the already corrected priority was not valid. As a consequence, if a correction of the priority data was accepted by the Board, this would have the effect of shifting the protection available from the European patent by one full year and clearly affect the interest of the public. Even assuming that the correction only involves one day, still the interest of the public is affected. It is not the length of time that counts. What counts is that the public is left in a situation of uncertainty, which is still such, ever if for one day only.

1.4 The Board comes to the conclusion that the decision of the Opposition Division not to grant the request for correction of the priority claim was correct.