T 1111/19 - Correction of errors and Rule 80

Key points

•  G 1/10 held that Rule 140 is not available for correcting errors in the Druckexemplar after the grant.
• G 1/10 added that "it is always open to a patent proprietor to seek to amend his patent during opposition or limitation proceedings and such an amendment could remove a perceived error. Such an amendment would have to satisfy all the legal requirements for amendments including those of Article 123 EPC.".
• The present decision clarifies that any such amendments must also comply with Rule 80 EPC.
• Hence, a main request wherein only errors were corrected, was not admitted by the Board.
• This is in line with Guidelines H-VI, 2.1.1.1 stating that a correction of an error in opposition will be admitted "if the correction is part of an amendment going beyond the mere removal of an error, namely an amendment occasioned by a ground for opposition".
• The Guidelines add that: "Therefore, if the proprietor files an amended specification fulfilling the requirements of Rule 80, they can additionally request the correction of an obvious error under Rule 139 (see T 657/11). "
• In the present case, the main request consists of only corrections of errors in the patent.
The Board, in machine translation: " The main request was not admitted to the appeal proceedings (Article 13 (1) RPBA 2020). Even if the requirements of Rule 139 EPC were met, none of the corrections made constitute an amendment prompted by a ground for opposition under Article 100 EPC. The changes made in the main request are therefore not in line with Rule 80 EPC, which applies independently of Rule 139 EPC."
• " Corrections under Rule 139 EPC represent a special case of an amendment within the meaning of Article 123 EPC (see G 3/89 and G 11/91, margin no. 1). The Implementing Regulations (see Article 123(1) EPC, first sentence) explain how and under what conditions these amendments are possible. The other provisions to be observed for amendments to the European patent application can be found in Rule 137 EPC, those for amendments to the European patent in Rule 80 EPC. In addition, Rule 139 EPC contains provisions relating to the correction of obvious errors in documents filed with the European Patent Office."
• "Even if Rule 139 EPC applies independently of Rule 80 EPC, this does not mean that the requirement of Rule 80 EPC need not be met. If the two provisions are applied independently of one another, this means for the correction of documents filed with the European Patent Office in opposition or opposition appeal proceedings that both provisions must also be fulfilled independently of one another. Rule 139 EPC does not in itself provide a sufficient legal basis for amending the claims of a European patent."
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The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t191111du1.html

Machine translation

Reasons for decision

1. Admissibility - main request

The main request was not admitted to the appeal proceedings (Article 13 (1) RPBA 2020). Even if the requirements of Rule 139 EPC were met, none of the corrections made constitute an amendment prompted by a ground for opposition under Article 100 EPC. The changes made in the main request are therefore not in line with Rule 80 EPC, which applies independently of Rule 139 EPC.

1.1 The appellant argued that a correction under Rule 139 EPC must always be possible and, in particular, must be considered independently of the requirements of Rule 80 EPC. She referred to decision T 657/11, margin no. 3.4, in which the board found exactly that.

The Board is not convinced by this argument. In paragraph 3.4 of T 657/11, the board there referred to the decision of the Enlarged Board of Appeal G 1/10, margin no. 13, down In it, after excluding the application of Rule 140 EPC for a correction of a patent, the latter stated the following:

"However, the patent proprietor always has the possibility, in opposition or limitation proceedings, to seek an amendment to his patent and thereby eliminate the alleged incorrectness. This amendment would of course have to comply with all the legal requirements for amendments, including those of Article 123 EPC."

The board in T 657/11 also noted that an amendment with the sole aim of correcting an error would not be considered to constitute a ground for opposition under Article 100 EPC, so that this condition of Rule 80 EPC would not be met. The board in T 657/11 therefore concluded that such errors or mistakes could only be corrected by means of a correction under Rule 139 EPC, since that rule and the special requirements defined therein would apply independently of Rule 80 EPC.

1.2 This does not mean, however, that the possibility of correction under Rule 139 EPC is always available without restriction, including in the present case. Corrections under Rule 139 EPC represent a special case of an amendment within the meaning of Article 123 EPC (see G 3/89 and G 11/91, margin no. 1). The Implementing Regulations (see Article 123(1) EPC, first sentence) explain how and under what conditions these amendments are possible. The other provisions to be observed for amendments to the European patent application can be found in Rule 137 EPC, those for amendments to the European patent in Rule 80 EPC. In addition, Rule 139 EPC contains provisions relating to the correction of obvious errors in documents filed with the European Patent Office.

Even if Rule 139 EPC applies independently of Rule 80 EPC, this does not mean that the requirement of Rule 80 EPC need not be met. If the two provisions are applied independently of one another, this means for the correction of documents filed with the European Patent Office in opposition or opposition appeal proceedings that both provisions must also be fulfilled independently of one another. Rule 139 EPC does not in itself provide a sufficient legal basis for amending the claims of a European patent.

1.3 In the case on which the decision T 657/11 was based, the claims were amended beyond a mere elimination of errors in such a way that they no longer contained the granted device claims and were therefore limited to the method claims. The patent proprietor had made this deletion in the newly filed request in order to remove the grounds for opposition under Article 100 EPC that had been brought against these claims. This requirement under Rule 80 EPC was thus satisfied.

At the same time, in the case underlying decision T 657/11, the patent proprietor corrected an obvious error within the meaning of Rule 139 EPC in the remaining method claims. Unlike in the present case, however, the requirements for amending the patent claims under Rule 80 EPC were met from the outset by deleting the device claims.

1.4 The board therefore concludes that, in line with what is stated in T 657/11 (paragraph 3.4), the provisions and specific requirements of Rules 139 and 80 EPC apply separately. The sole correction of errors in the claims according to the main request does not meet the requirement of Rule 80 EPC because it is not designed to remove a ground for opposition under Article 100 EPC.

The Chamber has therefore made use of the discretion granted in Article 13 (1) RPBA 2020 not to admit the main request into the proceedings.