5.5.3 Extent of competence of the Receiving Section for corrections under Rule 139, second sentence, EPC

R. 139, second sentence, EPC (previously R. 88, second sentence, EPC 1973) lays down as a condition for acceptance of a request for correction concerning a description, claims or drawings that a 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. This often requires a technical examination of the file, so that the question has arisen under R. 88 EPC 1973 whether the Receiving Section was competent to deal with the correction in such a case.

In decision J 4/85 (OJ 1986, 205) the Legal Board made it clear that the duties of the Receiving Section did not include a technical examination of the file; it should not, therefore, take a decision on a request for correction necessitating such an examination, but should leave the request in abeyance until the file had been transferred to the examining division (likewise J 5/12).

However, in J 33/89 (OJ 1991, 288) the Legal Board pointed out that the Receiving Section remained competent for decisions on requests for correction of drawings under R. 88, second sentence, EPC 1973 unless the request necessitated a technical examination. In J 12/14 the Legal Board agreed, and decided that the question of what technical features the figures in the drawings showed with respect to the claimed invention was not part of the formal examination procedure before the Receiving Section.

In J 3/21 the Legal Board observed that the Receiving Section had not exceeded its competence (Art. 16 in conjunction with R. 10(1) EPC) when deciding on the request by the applicants to correct the description of the European patent application, which had been filed in Chinese, by replacing it with that of the English translation filed on the same day. The ban on such corrections was categorical. An exchange of the description by way of correction would directly result in the separation of the filing date from the description in contravention of Art. 123(2) EPC. Refusing such a request for correction did not require any technical examination and technical qualifications.

In J 5/01 the Legal Board decided that the wording of Art. 16 EPC 1973 and Art. 18 EPC 1973 as they stood left no room for an interpretation according to which the responsibility for a European patent application could be split between the Receiving Section and the examining division. The clear and mutually exclusive allocation of this responsibility in the EPC prevailed over considerations of procedural or cost economy (likewise T 2411/10; contrary to J 8/82, OJ 1984, 155), Thus, relying on the point in time at which a request for correction was made rather than on the two acts mentioned in Art. 16 EPC 1973 (request for examination or indication under Art. 96(1) EPC 1973) would be contra legem. The Legal Board pointed out that corrections under R. 88 EPC 1973 were not a matter which formed part of the examination on filing or of the examination as to formal requirements (Art. 90 and 91 EPC 1973). Rather, the wish or the need for a correction might arise during the whole grant procedure and even afterwards, e.g. during opposition proceedings. For corrections necessitating a technical examination see J 4/85, OJ 1986, 205.