J 0002/92 (Priority declaration (correction)) 01-12-1992

1. The appeal complies with Article 106 and Rules 64 and 78(3) EPC, and, therefore, is admissible.

2. The Appellant filed an international application claiming priority from three previous patent applications filed at the US Patent and Trademark Office according to Article 8 PCT and Article 4 of the Stockholm Act of the Paris Convention for the Protection of Industrial Property. Correction of the priority date of the first priority application and of the file number of the third priority application, both data being wrongly indicated in the application form and later in the published international application, is requested.

3. According to Article 150(3) and Rule 88 EPC, first sentence, applicable pursuant to Article 26 PCT, certain errors, in particular "errors of transcription and mistakes in any document", may be corrected on request also in the case of an international application. The Receiving Section of the EPO has correctly applied Rule 88 EPC to the present case notwithstanding the fact that the time limit for correction under the PCT had expired according to Rule 91.1(g) PCT (see J 03/81, OJ EPO 1982, 100). According to the basic provisions of Articles 150(3), 158(1) EPC and Article 11(4) PCT, the applicant for an international application has the same legal possibilities as an applicant for a European patent application with regard to correction of mistakes in the priority declaration. Even if the international application has been published by the International Bureau without publication of a request for rectification pursuant to Rule 91.1(f) PCT, in principle, a correction of the priority declaration still remains possible during the regional phase according to Rule 88 EPC, as interpreted by the relevant case law of the Legal Board of Appeal.

4. The relevant case law of the Legal Board of Appeal dealing with the conditions for correction of a declaration of priority under Rule 88 EPC is summarised in the reasons for the decision in case J 06/91 of 1 December 1992. The teaching of this jurisprudence has to be applied to the present case as well. However, the present case and case J 03/91 (decided the same day) are the first cases which do not concern correction of an omitted priority declaration but rather correction of particulars in the priority declaration, i.e. date and file number as required by Article 8 and Rule 4.10(a) PCT and Article 88(1) and Rule 38(1) EPC, respectively. The following particulars of the present case give the Legal Board cause to develop further its previous jurisprudence:

- the error for which correction is requested does not concern an omission in the priority declaration but an error and mistake concerning particulars of the priority declaration (date and file number);

- the request for correction was filed after the publication of both the international application and the bibliographical data of the application pursuant to Article 158(1) EPC;

- the priority documents did not arrive at the International Bureau within the time limits referred to in Rule 17.1(a) PCT;

- a correction after expiry of the time limit referred to in Rule 91.1(g) PCT was refused by the International Bureau.

5. The requested correction of the filing date concerning the first priority application (A) and of the file number of the third priority application (C) is to be permitted for the following reasons:

5.1. As a necessary safeguard against abuse of the provisions of Rule 88 EPC, the Legal Board of Appeal has stated that "before the European Patent Office can accede to a request for correction of a mistake it must be satisfied that a mistake was made, what the mistake was and what the correction should be" (J 08/80, OJ EPO 1980, 293, 296 par. 5; J 04/80, OJ EPO 1980, 351, par. 3; J 04/82, OJ EPO 1982, 385, 389 par. 6).

In the present case, these conditions are fulfilled. By mistake, the applicant indicated in the request form the wrong priority date concerning the first priority application (A) and the wrong document number concerning the third priority application (C). The applicant's professional representatives explained the mistakes as "simple clerical errors", the source of the incorrect priority declaration being misleading information contained in a reporting letter to the applicant (US/NIH) and the incorrect document number resulting from a misunderstanding during a telephone conversation (US/NTIS).

The Board is satisfied that these clerical errors, that is, typing 23 July instead of 22 July and indicating a wrong document number 334,304 instead of 344,304 when filling in the international patent application form, are typical errors of transcription in the meaning of Rule 88 EPC, first sentence. The way in which the mistakes resulted from mis-typing and misunderstanding is clearly explained. Neither the priority date nor the priority number as filed and published represent what was apparently intended.

5.2. In principle, Rule 88 EPC, first sentence, in cases of an incorrect priority declaration of this nature allows a correction without any time bar, even after publication of the patent application. However, such a correction is at the discretion of the competent authorities (J 07/90, to be published, par. 2.2.; G. Paterson, The European Patent System, London 1992, no.5-52, 6-05, 6-08). In case J 07/90, the Board stated that the EPO is "by no way compelled to permit the correction of errors of any kind at any time". According to the legal text of the provision in the three official languages ("können" - "may" - "peuvent"), the European Patent Office has the authority to permit certain types of corrections at its discretion. The overriding principle in exercising the discretionary power is to balance the interests of the applicant in gaining optimal protection and the interests of the public in respect of legal security (cf. R. Singer, Europäisches Patentübereinkommen, 1989, Article 123 par. 21).

5.2.1. In weighing up the interests of third parties and those of the applicant, the Board is satisfied in the particular circumstances of this case, involving as it does purely clerical errors, that the interests of third parties will not be adversely affected by a correction of the priority declaration as requested.

5.2.2. The Board finds that a correction of particulars in a priority declaration is admissible at least in a case such as the present one where the discrepancy is apparent on the face of the published patent application itself even if this results in backdating the priority.

Looking at the particulars of the international publication of patent application no. PCT/US 89/03267, the mistake concerning the first priority date is apparent already on the front page of the publication to practitioners dealing regularly with patent applications of this kind. The priority date of 23 July 1988 is obviously incorrect because that day was a Saturday and US patent applications are not accorded weekend filing dates.

With regard to the apparent discrepancy concerning the priority date of the priority document, the public could not rely in the present case on the correctness of the publication of the international patent application. It may be expected that third parties interested in the accurate priority date will investigate the discrepancy and thus ascertain the correct priority date by file inspection. Thus, a retrospective correction of the priority date may be permitted in spite of the fact that the international patent application was published without any warning and that the correction has the effect of making the date for publication of the application prescribed by Article 93(1), Article 158(1) and Rule 104b(1) EPC one day earlier.

5.2.3. As far as the request for correction of the file number of the third priority document (C) is concerned, the above considerations on the balance of interests lead to the same result. Obviously no substantial interest exists in maintaining a wrong file number in the published application. Third parties should inspect the file if they wish to draw substantive conclusions from the priority document. In this respect, the file number as such is of no relevance to a competitor who has to make up his mind whether he may use the invention or not. A correction does not affect his interests.

However, a correction of the file number only makes sense if the replacement of the wrong document concerned was still admissible more than three months after publication of the international application in the European Patent Bulletin. The question arises whether a wrong priority document may still be replaced after expiry of the time limits referred to in Rule 17.1(a) PCT and Rules 38(3) and 104b(3) EPC, respectively.

6. The Board finds that, in cases where the applicant requested transmittal of the priority documents according to Rule 17.1(b) PCT in due time, a wrong priority document may be replaced, even after publication of the international application, if the Appellant erroneously indicated a wrong document number.

6.1. The Appellant asked for transmittal of the documents pursuant to Rule 17.1(b) PCT within the time limit as provided for in the second sentence of the provision. The question of re-establishment of rights (Article 48(2a) PCT and Article 122 EPC, respectively) does not arise, if the request for transmittal is filed in due time, but executed late.

The situation according to Rule 17.1(b) PCT is similar to that under Rule 38(3) EPC, third sentence, with regard to the role the receiving Office has to play after receiving the request for transmittal of the relevant priority documents. The receiving Office is responsible for filing a copy of the indicated previous applications in due time. Thus, even if the documents are forwarded late by the receiving Office, the right of priority is not lost pursuant to Article 91(3) EPC and Rule 17.1(c) PCT.

6.2. A loss of the right of priority would be equally unjust in the circumstances of the present case. The wrong file number was erroneously indicated by mistake of the applicant. The mistakes in the request for transmittal emerged from clerical errors (see par. 5.1 above). From the start there was no doubt which priority document the appellant intended to submit.

Third parties cannot be misled by a replacement of the wrong document after publication of the international application. They could easily find out from a file inspection that document no. 334,304 was completely irrelevant and that there was a discrepancy with regard to the priority dates. Thus, it was clear from the file that the relevant document concerning the claimed priority of 27 April 1989 was not yet on file.

6.3. However, the Board leaves open the question whether the replacement of a wrong priority document is always possible in cases where a correction of the document number is allowed under Rule 88 EPC. A problem may arise if the time limits, referred to in Rule 17.1(a) PCT, Rule 38(3) and Rule 104b(3) EPC, have expired and the conditions for a re-establishment of rights under Article 48(2a) PCT and Article 122 EPC are not fulfilled.

7. The Board orders the reimbursement of the appeal fee pursuant to Rule 67 EPC. It finds that the Receiving Section committed a substantial procedural violation when it issued a decision without having given the Appellant an opportunity to submit detailed information and evidence as offered in the correction request of 16 May 1991 in order to demonstrate precisely how the errors had occurred. The Receiving Section took its decision on 19 July 1991 without having fixed a time limit for the submission of such evidence or having awaited it for a reasonable time. The Appellant was entitled to expect the Receiving Section to await the further evidence, as it had announced by letter dated 4 July 1991 that further information would be provided to the Receiving Section in the near future. As the Board has already stated in case J 04/82 (OJ EPO 1982, 385 par. 11), a premature decision of this kind represents a substantial procedural violation with regard to Article 114(2) EPC.