T 0299/24 - Correcting errors in amended claims

Key points

• Claim 1 of the former main request reads: "(a) "Headrest (10), in particular headrest for vehicle seats, (b) comprising a bone conduction two-way sound transmission system (1), which in turn comprises at least one bone conduction loudspeaker (5) and at least one bone conduction microphone (7), ..."
• "With its written reply to the board's [preliminary opinion], the applicant filed a corrected main request, replacing the phrase "in particular headrest for vehicle seats" in claim 1 with the wording "headrest for vehicle seats" []. It framed this submission as a correction of an error under Rule 139 EPC."
• The Board: "Under Rule 139, second sentence, EPC, if a request for correction concerns the claims, the "correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction". According to the established jurisprudence of the Boards of Appeal (see G 3/89, Reasons 5 and 6; G 11/91, Reasons 6), a two-step approach applies in this regard. It must first be established 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 reader using their common general knowledge. Secondly, the correction of the error must be obvious."
• My analysis is that Rule 139, second sentence, is an implementation of Article 123(2) EPC and hence provides a rule for determining when a purported correction has sufficient basis in the application as filed (i.e., does not extend beyond the content of the application as filed). This follows directly from G 3/89, hn. 1, in my view ("Such a correction is of a strictly declaratory nature and thus does not infringe the prohibition of extension under Article 123(2) EPC."
• In the present case, the amended claim had an undisputed, explicit basis in the application as filed. The issue was not whether the application as filed contained an error. Hence, I don't think the second sentence of Rule 139 applied.
• Instead, the case concerns a case amendment, in particular one under Article 13(2) RPBA. Depending on the facts of the case, if a "subsequently filed document" (i.e., a document filed after the filing date of the patent application) contains an error, the party concerned may correct that error later in the procedure. The evident nature of the error and the correction (or lack thereof) are among the factors the board must consider when deciding whether to admit the correction. At any rate, a correction of an amended claim 
• Credit to Mr Thomas for flagging the decision on his weblog.
•  The Board does not admit the amended set of claims (with reasoning that would also apply under Art. 13(2) RPBA, in my view): " Crucially, nowhere in the statement of grounds of appeal does the appellant base any argument on the headrest being exclusively limited to a "headrest for vehicle seats". The appellant neither stated that claim 1 was restricted to overcome a specific objection, nor did it rely on the specific vehicle-seat environment to establish an inventive step. Because the appellant's technical arguments apply perfectly and seamlessly to the broader claim wording ("in particular headrest for vehicle seats") that was actually filed, the skilled reader reviewing the statement of grounds of appeal alongside the claims would find a coherent, self-consistent appeal case. There is thus no logical disconnect that would alert the skilled reader to a mistake.
• "Since the request for correction under Rule 139 EPC has been refused, the "corrected" main request constitutes an "amendment" of the appellant's appeal case. However, leaving the question of admittance aside, the board considers the "corrected main request" not to comply with Article 56 EPC. In this regard, the board endorses the examining division's assessment of inventive step set out in Reasons 10 of the appealed decision, for the following reasons."
• This makes the whole discussion of Rule 139 moot (or obiter), it seems to me.

EPO 

The link to the decision is provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t240299eu1