Enlarged Board of Appeal Decision G 1/10. How to correct an EP patent

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Previously, Rule 140 EPC was available for correction of obvious errors in the patent text (i.e. description, claims, and figures) after grant of a European patent. This is however not possible anymore following Enlarged Board of Appeal Decision G 1/10. It should be noted that the decision is explicitly not related to correction of errors in bibliographic data or priority data. An obvious error in the text of a granted patent can be corrected at the national patent offices, by filing an appeal against the Decision to Grant (if the error is caused by a transcription by EPO) , or during opposition proceedings at the EPO. An obvious error in a granted European patent should be read as if corrected.

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Enlarged Board of Appeal Decision G 1/10. How to correct an EP patent

  1. 1. Artist Bjørn Bjørnholt Enlarged Board of Appeal Decision G 1/10 23. July 2012 Request to correct patent Peter Sørensen M.Sc. Physics/Chemistry European Patent Attorney, Partner T +45 87 32 18 04January 2013 E psn@pv.eu
  2. 2. Errare humanum est…
  3. 3. Outline- Legal basis- Questions & Answers by EBOA- Specific case of EP0961184- Reasons pro et contra- Amendments vs. corrections- Practical tips- Summary
  4. 4. Overall legal basis for corrections and amendmentsArticle 123 EPC AmendmentsRules for amendments and corrections:Rule 137 Amendment of the European patent applicationRule 138 Different claims, description and drawings for different StatesRule 139 Correction of errors in documents filed with the European Patent OfficeRule 140 Correction of errors in decisions
  5. 5. Rule 140 EPCCorrection of errors in decisionsIn decisions of the European Patent Office, only linguisticerrors, errors of transcription and obvious mistakes maybe corrected.
  6. 6. Amendments and corrections”Admissible”  Timing with respect to procedure”Allowable”  Substantive issue Case Law of BOA at EPO, Section III Guidelines for Examination at EPO, Section H 6
  7. 7. Questions asked by Board of Appeal:1.Is a patent proprietors request for correction of the grant decision underRule 140 EPC which was filed after the initiation of opposition proceedingsadmissible?In particular, should the absence of a time limit in Rule 140 EPC beinterpreted so that a correction under Rule 140 EPC of errors in decisionscan be made at any time?2.If such a request is considered to be admissible, does the examiningdivision have to decide on this request in ex parte proceedings in abinding manner so that the opposition division is precluded fromexamining whether the correction decision amounts to an unallowableamendment of the granted patent?
  8. 8. Answers by Enlarged Board of Appeal: 1. Since Rule 140 EPC is not available to correct the text of a patent, a patent proprietors request for such a correction is inadmissible whenever made, including after the initiation of opposition proceedings. 2. In view of the answer to the first referred question, the second referred question requires no answer.
  9. 9. Practice up till G 1/10: Rule 140 correction of patent text possible with Exam. Division Approval of „Druck‟ translation+ fee Grant 9M Informed of decision Opposition proceedings Correction of errors possible timeRule 71(3) to grant, Art. 97 (1) under R139 EPC Opposition initiated…
  10. 10. After G 1/10: Rule 140 correction of patent text NOT possible after grant ! Approval of „Druck‟ translation+ fee Grant 2M 9M Opposition proceedingsRule 71(3) Informed of decision to grant Correction of errors possible under R139 EPC time Art. 97 (1) Correction of error cause by EPO transcription of „Druck‟ possible by Opposition initiated appeal of Decision to Grant 2 months window - No „collision‟ with Exam. Division
  11. 11. Specific case of EP0961184 11
  12. 12. EP0961184 to Fisher-Rosemount Systems, Inc.A computer-based database management method permits management of aconfiguration database associated with one of a plurality of devices. Each device hasa variable configuration which includes at least one adjustable parameter.The method includes the steps of selecting a particular device, selecting a particularparameter of the particular device, assigning a particular value for the particularparameter at a particular time, communicating the particular value for the particularparameter to the particular device at the particular time, creating a transactionrecord, and storing the transaction record in a configuration database.The transaction record includes an identifier uniquely identifying the particular deviceand further specifies the particular parameter of the particular device, the particularvalue for the particular parameter, and the particular time at which the particularvalue is to be applied to the particular parameter. 12
  13. 13. 13
  14. 14. Claim 1 as grantedTypographical error!Should be „portion‟ of the device data, not „position‟…. 14
  15. 15. History of EP0961184- Filed 1997, granted 2003- September 2004, Opposition filed: - Sole ground for opposition; added subject-matter Art. 100 (c) EPC Reason: ”…position of device data…” has no basis in the application as filed- December 2005, patentee requests case referred back to Exam. Div. for correction of error- November 2006, Opposition Div. issued communication that case is referred back to Exam. Div. - This procedural action is not a formal decision but a communication, hence the opponent‟s appeal against this referral was thus considered an inadmissible appeal… BOA decision T 165/07 in November 2007- March 2009, Opposition Div. takes decision that the case is referred back to Exam. Div. for correction of error, opponent appeals this decision- June 2010, BOA decision T1145/09 issued with referral to EBOA; - Fundamental point of law & - Uniform application of law (T 268/02 in conflict with T 79/07)- July 2012 EBOA decision, case referred back to Opposition Div. 15
  16. 16. Reasons pro et contra 16
  17. 17. EBOA has to balance the interests… Interest of 3rd Interest of parties, applicant/patentee the „Public‟ Procedural efficiency of EPO 17
  18. 18. Arguments in favour of previous use of Rule 140- Exam. Div. responsible for the Decision to Grant; they should correct it, G 8/95, Reasons 3.4- Rule 140 has no time limit- Rule 140 only relates to obvious errors, 3rd parties not affected because of strict standard for being obvious- Corrections are different from amendments- Opposition Division may review corrections approved by Exam. Division 18
  19. 19. Arguments in favour of limiting the use of Rule 140 after grant- Limitation of EPO compentence after grant, national patent offices provide means for correction- No delay of opposition proceedings- Legal certainty for 3rd parties; Rule 140 applied after 9M term for opposition leaves would-be opponents in a harsh situation!- Inter partes opposition proceedings should not be turned into ex partes proceedings before Exam. Div.- “If … a correction would be obvious then… there can be no surprise and no adverse effect on opponents or others, because all concerned should read the patent as if corrected and an actual correction should not be necessary. “ , Reasons point 8. 19
  20. 20. Amendments vs. corrections
  21. 21. EPO standard for corrections of obvious errors:Both the error and the correction must be such that it is immediately evident (atleast once attention is directed to the matter): (i) that an error has occurred; and (ii) what the correction should be (directly and unambiguously). G 11/91 & G3/89 Guidelines for Examination at EPO, Section H, 4.2.1Examples:• Typing errors, spelling errors, etc.• 2+2 =5  2+2= 4 or 2+3= 5 ?!• Position of device data  portion of device data ?! 21
  22. 22. Difference between amendments and corrections?EBOA seems to consider corrections as a special kind of amendments; “However, 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.”, Reasons 13 22
  23. 23. Corrections are different from amendments in somerespect…Relation between Rule 139, 2nd sentence, and Art 123 (3) EPC when correcting obvious errors?Legal fiction: Obvious errors should be read as if they were written as originally intended, correction has retrospective effect.  No extension of scope under Art 123 (3) EPC when obvious error is corrected!T 200/89 (OJ 1992, p. 46):1. An allowable correction under Rule 88 [139] EPC has a retrospective effect, in contrast to an amendmentunder Article 123 EPC, which is not retrospective.2. Article 123(3) EPC and Rule 88 [139] EPC contain different requirements which are both intended to ensurelegal certainty in the sense that after amendment or correction, to a skilled person, the protection conferred bythe patent should not be greater than was apparent before the amendment or correction.G 3/89; …correction under Rule 88 [139], second sentence, EPC is of a strictly declaratory nature. Thecorrected information merely expresses what a skilled person, using common general knowledge, would alreadyderive on the date of filing from the parts of a European patent application, seen as a whole, relating to thedisclosure. This does not therefore affect the content of the European patent application as filed. Under thesecircumstances, there cannot be said to be any retroactive effect. 23
  24. 24. Practical tips 24
  25. 25. Patent propiertor point of view- G 1/10 to be fully implemented with next version of Guidelines, Sept. 2013- Important terms in claims should be explained and supported by the description (less „sensitive‟ to errors)- Check your application text /„Druck‟ carefully, errors not the responsibility of EPO even though they grant the patent: “That [previous] practice suggests some patent applicants seek to rely on Rule 140 EPC to "tidy up" their own errors by the fiction of ascribing them to the examining division.”, Reasons point 11- Review publication of the EP patent (B) carefully,  Appeal Decision to Grant, if critical errors are present due to EPO transcription.- Consider correcting errors with national patent offices 25
  26. 26. 3rd party/opponent point of view- Read obvious errors in granted patent as if corrected- Check if patent is corrected following 2 months after grant decision- Is the error really obvious under EPO‟s standard? - If not obvious, the error could be used for a good Art. 123 2/3 EPC attack…- General interest of the public; correct patent texts - Is this purpose fulfilled with G 1/10 ? - Is the general public aware of what an „obvious error‟ is…? 26
  27. 27. Summary- G 1/10 limits the possibility to correct errors in the patent text after grant- G 1/10 not related to bibliographic information incl. priority data- Read your application/„Druck‟ copy carefully before grant; - Errors may be expensive and time consuming to correct - Errors may be irreparable if they are not obvious!- Read patents with obvious errors as if corrected  Remember the strict EPO requirement for „obvious‟ error 27
  28. 28. Questions?
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