T 0923/13 - Error in claim, and basis

Key points

• The opponents submit that dependent claim 5 lacks basis. Patentee submits that the feature at issue is clearly an error. "It would have been immediately clear to the skilled reader that the inserted sentence made no sense at this position of the claim. At the same time, the skilled reader would "mentally" place the sentence [at another place in the claim]."
• The Board: "The board is not convinced [by patentee's argument]. In order for a correction to be allowable under Rule 139, second sentence, EPC, it must be established: [that is is obvious that an error is present, and also is obvious what was intended]." 
• "The board agrees with the appellant that the skilled reader would recognise that the added sentence does not make any sense in its present position in the claim, but it disagrees with the appellant's assertion that it would be immediately evident what the correct context for the sentence would be." Therefore, claim 5 lacks basis.
• As a comment, there was in fact no request for correction of the patent under Rule 139. The Board seems correct in that Rule 139 applies by analogy, because G 1/10, r. 8 held that then "all concerned should read the patent as if corrected". 

EPO T 0923/13 - link

Reasons for the Decision

MAIN REQUEST (granted claims)

1. Amendments (Article 100(c) EPC)

1.1 Respondents 02 and 03 [opponents] argued that granted claim 1 extended beyond the content of the application as filed because: [...]

They further argued that granted claim 5 extended beyond the content of the application as filed because:

(d) it included the feature "... a strip tape covers a discontinuous section of the thermoplastic material innermost layer is laminated by an extrusion-laminating method and between two edges of the packaging material in liquid tight..." (emphasis added by the board), whereas according to Figure 2 of the application as filed what was disclosed was a strip tape which was sealed to the packaging material wrap by a strip tape applicator.

1.5 Lastly, concerning amendment (d), the board agrees with the respondents that the pre-grant amendment to claim 5 finds no support in the application as filed.

1.5.1 According to the appellant, the amendment did not add subject-matter because it resulted from an obvious error. It would have been immediately clear to the skilled reader that the inserted sentence made no sense at this position of the claim. At the same time, the skilled reader would "mentally" place the sentence after the first occurrence of the word "layer" in the characterising part of the claim.

1.5.2 The board is not convinced. In order for a correction to be allowable under Rule 139, second sentence, EPC, it must be established:

- (i) that it is obvious that an error is in fact present in the document filed with the EPO, the incorrect information having to be objectively recognisable by the skilled person using common general knowledge, and
- (ii) that the correction of the error is obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction (see Case Law of the Boards of Appeal of the EPO, 8th edition 2016, II.E.4.2).

1.5.3 The board agrees with the appellant that the skilled reader would recognise that the added sentence does not make any sense in its present position in the claim, but it disagrees with the appellant's assertion that it would be immediately evident what the correct context for the sentence would be.

Firstly, there are several layers in the laminate that could be extrusion-laminated, and the skilled person has no reason to assume that it can only be the innermost layer. Other layers are equally possible, and even the strip tape itself, at least according to the respondents. Secondly, the board cannot accept the appellant's argument that it can only be the "innermost layer" because the same amendment has been made to claim 1. In fact, claim 1 has also been amended such that the parameters relate to the innermost layer, as discussed under (b) above. This amendment has not been made in claim 5. Thus, there is no conformity in the amendment of claim 1 and the alleged correct position of the relevant wording in claim 5. Therefore, the board is not convinced that the skilled reader would draw any conclusion by analogy by only considering part of the amendment to claim 1, while ignoring the rest.

1.6 In summary, amendment (a) to claim 1 and amendment (d) to claim 5 are not supported by the disclosure of the application as filed. The ground under Article 100(c) EPC thus prejudices the maintenance of the patent on the basis of the main request.