2. Scope of Rule 140 EPC
2.1. Correction of the text of a patent
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Under the boards' case law prior to G 1/10 (e.g. T 850/95 date: 1996-07-12, OJ 1997, 152; T 425/97, T 965/98) the text of a patent could be corrected under R. 140 EPC if it was not, and obviously could not be, in the form intended by the decision‑making department.
T 367/96 of 21 June 2001 date: 2001-06-21 and G 1/97 introduced a narrower interpretation of R. 140 EPC. According to this, R. 89 EPC 1973 had to be interpreted narrowly and only allowed for the correction of formal errors in the written text of the decision notified to the parties in accordance with R. 111 EPC (R. 68 EPC 1973). It did not, however, pave the way for re‑examination of the factual or legal issues on which a decision was based, nor for reversal of any conclusion derived by the decision‑making department from a consideration of these issues.
In G 1/10 (OJ 2013, 194), the Enlarged Board went further, holding that, although patent documents referred to in a grant decision become an integral part of the decision, they cannot be corrected under R. 140 EPC. Since R. 140 EPC is not available to correct the text of a patent, a patent proprietor's request for such a correction is inadmissible whenever made, including during opposition or limitation proceedings (now established case law of the Boards of Appeal, see e.g. T 657/11, T 2051/10, T 164/14, T 1578/13). The Enlarged Board's decision was limited to corrections within grant decisions of the description, claims and drawings (patent documents), and not concerned with corrections of bibliographic data.
The Enlarged Board stated that the absence of a possibility to request patent corrections under R. 140 EPC should not prejudice patent proprietors. If a correction is obvious (as it should be to satisfy R. 140 EPC) then there will be no surprise or adverse effect on opponents or others, because all concerned should read the patent as if corrected and an actual correction is unnecessary. If, however a correction is less than immediately obvious, it should not be allowed under R. 140 EPC anyway, which is confined to correction of "obvious mistakes". If, given the opportunity to check the patent text before approving it, an applicant does not draw any errors to the attention of the examining division and thus ensures that his approval is limited to the correct text, then the responsibility for any errors remaining in that text after grant should be his alone, whether the error was made (or introduced) by him or by the examining division.
If however the examining division proceeds to make a decision to grant which contains an error subsequently made by it, so that the granted text is not that approved by the proprietor, then the proprietor is adversely affected by that decision and is entitled to appeal. A patent proprietor may seek to amend his patent during opposition or limitation proceedings and such an amendment could remove a perceived error, however, it would have to satisfy all the legal requirements for amendments including Art. 123 EPC.
In T 506/16 the board held that according to G 1/10, the obligation to check the text in which the patent is to be granted lies with the applicant, and if it does not draw the examining division's attention to any errors, then the appellant alone bears the responsibility for any errors remaining in the text, regardless of who is responsible for the error.
In T 2051/10, the appellant asserted that there was an erroneous discrepancy between the wording of the granted patent and that of the Druckexemplar and requested its "correction". Citing G 1/10, the board held that such a "correction" could not be made under either R. 139 EPC or R. 140 EPC and treated the appellant's request as a "normal" request for amendment under Art. 123(1) EPC.
- Case law 2019
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In T 2081/16 the board distinguished the case at hand, where the patent had not been granted based on documents approved by the applicant, from G 1/10 (OJ EPO 2013, 194). It held that a decision to grant pursuant to Art. 97(1) EPC which was based on an application in a text which was neither submitted nor agreed to by the applicant, as was the case here, did not comply with Art. 113(2) EPC. Where the text intended for grant is not communicated to the applicant under R. 71(3) EPC, the fact that the appellant subsequently files a translation and pays the fees for grant and publishing is not decisive. The provisions of R. 71(5) EPC, in this regard, refer to R. 71(3) EPC and therefore presuppose that the applicant has not been notified of any text but of the text intended for grant (emphasis added by the board). Only in this case would R. 71(5) EPC apply and would the filing of a translation and the payment of the relevant fees imply the approval of the text communicated to it. In arriving at its decision, the board stated that it had not deviated from G 1/10 and that Art. 21 RPBA 2007 did not therefore apply. In G 1/10, the Enlarged Board of Appeal found that R. 140 EPC was not available to correct the text of a patent. This question was not at stake in the case in hand. In the case in hand, no text had been approved by the applicant. This was fundamentally different from attempts to impute mistakes in amended claims which were introduced by an applicant to the examining division "by suggesting the examining division did not intend to make a decision which in fact included the very text approved by the applicant himself – in order to bring the applicant's own error within the ambit of R. 140 EPC" as referred to by the Enlarged Board in G 1/10 (see point 11 of the Reasons).
In the decision under appeal in T 1003/19 the appellant had not requested the grant of a patent with any other than the seven drawing sheets as initially submitted and published. The communication under R. 71(3) EPC, however, referred only to "drawings, sheets 1/1 as published". The board found that the decision under appeal did not comply with Art. 113(2) EPC and that the examining division had committed a substantial procedural violation. The request for reimbursement of the appeal fee was however rejected; while the error was committed by the examining division, the appellant had several instances to spot this error and, at the latest, could and should have noticed it when comparing the text of the communication under R. 71(3) EPC and the "Druckexemplar". In arriving at its decision, the board stated that the consequence as stipulated in R. 71(5) EPC, i.e. "the applicant ... shall be deemed to have approved the text communicated to him under paragraph 3", only applied where the applicant, according to R. 71(3) EPC, had been informed "of the text in which it [i.e. the examining division] intends to grant" the patent. The meaning of the word "text" (in German: "Fassung") is not limited to written information but may contain visual information as can be deduced from R. 73(1) EPC: "The specification of the European patent shall include the description, the claims and any drawings." With reference to the case in hand the board further stated that the EPO may on its own initiative suggest minor amendments; however the removal of all drawing sheets showing embodiments of the invention could not be expected to be accepted by an applicant. The board stated that it had not deviated from G 1/10, which based its consideration on the requirement according to R. 71(3) EPC that the applicant must be informed of the text in which the examining division intends to grant a patent (see point 10 of the Reasons) and deals with the applicant's possible reactions thereto, like the implicit approval of this text. In contrast thereto the board's decision in the case in hand was based on the fact that the text intended for grant by the examining division had, based on verifiable facts, not been communicated to the appellant and, therefore, R. 71(5) EPC did not (at that time) apply. As a result, no text had been approved by the appellant.