L. Correction of errors in decisions
3. Obvious mistakes according to Rule 140 EPC
In T 450/97 (OJ 1999, 67), the board held that there was an obvious mistake within the meaning of R. 140 EPC if the text of a decision did not reflect the decision-making department's real intention. In T 715/14 the contested decision had referred to a communication dated 3 October 2013 although, undisputedly, the last-issued communication dated 19 April 2013 had been meant. Its correction had then introduced an additional reference to two other communications, which led the appellant to contend that it amounted to a subsequent change in the decision's content and the underlying reasons. The board, however, considered the correction permissible under R. 140 EPC because the communication dated 19 April 2013 was clearly and undisputedly meant and that communication referred to the other two.
In T 683/06, the board held that a correction under R. 140 EPC was not available for re-dating an application where its filing date had been deliberately chosen in a decision-making process (even if that process turned out to be mistaken).
In T 212/88 (OJ 1992, 28) the board held that the absence of a chairman's or minute-writer's signature at the end of an opposition division's decision was a rectifiable, obvious error within the meaning of R. 89 EPC 1973. In the case in question a second examiner had been referred to in the minutes as a member of the opposition division, although in fact he was not a member and did not take part in the oral proceedings (see also T 212/97).
In T 212/97 the board pointed out that R. 89 EPC 1973 permitted the opposition division to correct an obvious mistake in the copy of the decision notified to the parties. In the case at issue, a fourth person had been named as a member of the opposition division although no such person had been mentioned in the original document.
- T 572/19
Abstract
In T 572/19 the proprietor appealed the opposition division's decision, issued in writing on 17 December 2018, to revoke the patent ("the appealed decision"). By communication under R. 100(2) EPC, the parties were informed of the board's observation that EPO Form 2339, dated 10 December 2018, bore the name, but not the signature, of the legally qualified member who had participated in the decision-making process. The board's preliminary view was that this amounted to a substantial procedural violation.
By the opposition division's communication dated 26 June 2023, to which an altered EPO Form 2339 ("the post-signed Form 2339") and an explanatory note on EPO Form 2906 ("the division's explanation") were annexed, the parties and the board were informed that the missing signature had been corrected under R. 140 EPC, with the chair belatedly signing the form on behalf of the legally qualified member. The missing signature was deemed to concern "a formal error being an obvious mistake", made when the paper file circulated between EPO sites. It was assured that the grounds attached to the appealed decision, when issued, had previously been circulated by email to all members of the opposition division; also the grounds had thus reflected the opinion of all the members of the opposition division, including the legally qualified member, who had confirmed her agreement in an email at the time.
The first question addressed by the board was the scope of signature requirement under R. 113(1) EPC since the parties disagreed thereon. The disagreement lay in whether the term "decisions" means simply the outcome of the proceedings (e.g. "The patent is revoked"), which is what opponent 1 argued, or extends to the substantiation in the written decision, which was the proprietor's view. Referring to T 2076/11, J 16/17 and T 390/86, the board held that the jurisprudence of the boards of appeal indicated that the written decision, including the substantiation, was the object of the signature requirement. There was, then, no doubt that the signature requirement under R. 113(1) EPC applied to the written decision, including the substantiation, and not only to the outcome that might be announced during oral proceedings.
Secondly, the board examined the purpose of the signature requirement under R. 113(1) EPC. Referring inter alia to J 16/17, it emphasised that the purpose of the signature requirement under R. 113(1) EPC was only achieved if there was an unbroken chain of manifest personal responsibility, taken by each member of the decision-making body who was assigned to the case, throughout the decision-making process, including for the written decision.
Finally, due to the cases presented by the opponents, the board addressed three potential remedies: a) "the pragmatic approach" according to which another member signs on behalf of one who is not in a position to sign, and provides a written explanation; b) recognition of a possibility for the opposition division, after remittal, to heal the deficiency without entering into the merits and extent of the appealed decision; and c) correction of the appealed decision under R. 140 EPC. The board held that none of these remedies was applicable in the current case. In particular, it was of the view that while issuing a decision without the legally qualified member's signature had been a mistake, it had not been an obvious one within the meaning of R. 140 EPC. It followed that the appealed decision had not been corrected under R. 140 EPC by the post-signed Form 2339 and the division's explanation.
The board concluded that since none of the potential remedies was applicable, the chain of manifest personal responsibility was broken, the missing signature was a substantial procedural violation, and the appealed decision was invalid. The appealed decision was set aside, and the case remitted to the opposition division for further prosecution. The board found reimbursement of the appeal fee under R. 103(1)(a) EPC equitable, for the reason that no substantial progress had been made in the appeal since it had been filed (T 3071/19).