G 0002/95 (Replacement of application documents) 14-05-1996

Summary of Facts and Submissions

I. In the appeal which was the subject of J 21/85 (OJ EPO 1986, 117) the appellants requested that by way of a correction under Rule 88 EPC new documents be exchanged for the application documents as originally filed, which were in conformity with the request for grant of a European patent. The appeal was refused on the grounds that Rule 88 EPC did not permit an invention covered by a request for grant of a patent to be exchanged for another. The request for grant was by its very nature a request for grant of a European patent for a specific invention. To exchange the whole subject-matter of the invention described for another was no more nor less than to withdraw one request for grant and re-file another. The request at this point that a European patent be granted for other subject-matter could not therefore be attributed the original date of filing.

II. In T 726/93 (OJ EPO 1995, 478) the appellants requested that a correction pursuant to Rule 88 EPC be granted such that the description and claims contained in the priority document be regarded as the definitive ones for the European patent application as filed. The appellants had filed a description and claims which were at variance with the request for grant. Moreover, the drawings as filed did not correspond to the description but to the drawings of the priority document filed together with the application documents. The description, claims and drawings of the priority document however accorded with the request for grant. The board of appeal granted the request for correction on the grounds that if all the documents of the European patent application were considered, it was immediately evident that nothing else had been intended than what was offered as the correction.

III. J 21/94 (OJ EPO 1996, 16) is based on the following facts: the application documents filed by the appellants (description, claims and drawings) were at variance with the request for grant. On the other hand, the priority document, which was filed after the filing date, corresponded to the information given in the request for grant. The appellants then also filed application documents which corresponded to the information contained in the request for grant. They requested that the application documents as filed be replaced by way of a correction under Rule 88 EPC by the subsequently filed application documents and accorded the original filing date.

In view of the difference between J 21/85 (see section I above) and T 726/93 (see section II above) the Legal Board of Appeal referred the following point of law to the Enlarged Board of Appeal in its interlocutory decision J 21/94 dated 12 April 1995:

"Can the complete documents forming a European patent application, that is the description, claims and drawings, be replaced by way of a correction under Rule 88 EPC by other documents which the applicants had intended to file with their request for grant?"

The Legal Board of Appeal made the following comments in support of the referral:

- The question as to which documents could be taken as the original disclosure of the invention is not only crucial to the fate of the application to be corrected, but may also have a decisive influence on the patentability of conflicting applications, as the content of the application to be corrected, backdated to the filing date, becomes, for the latter, the prior art pursuant to Article 54(3) EPC.

- Any answer to this question must take into account the Enlarged Board of Appeal's rulings in cases G 3/89 and G 11/91 (OJ EPO 1993, 117 and 125) on the interpretation of Article 123(2) and Rule 88, second sentence, EPC and the relationship between these provisions. Since according to this case law extension of the disclosure alone is not admissible, objections to amendment are all the more justified if the disclosure is to be changed not just in part but in full.

- A correction must always be ruled out if it would lead to a subsequent extension of the content compared to the disclosure on the filing date.

- The case law relating to the correction of erroneous designations of a contracting state assumes that the correction of a designation does not affect the disclosure of the invention under Article 83 EPC. This case law relates to the interpretation of procedural steps. Such amendments are not subject to the restraints of Rule 88, second sentence, EPC, which, in accord with Article 123(2) EPC, rules out an extension of the disclosure after the filing date.

- Neither does it make any difference whether the priority document had been submitted on the filing date or furnished later because the Enlarged Board of Appeal expressly refused to admit the priority document filed on the filing date in support of the request for correction (G 3/89, loc. cit.; Reasons, 7).

IV. The appellants in the proceedings before the Enlarged Board of Appeal furnished a statement on 28 August 1995 containing the following comments:

- In the case on which the decision in J 21/85 was based (see section I above), the aim had indeed been to replace the request plus the documents enclosed with it, such that no error had been ascertainable in the totality of the documents because they formed a uniform, logical whole. In contrast, the facts pertaining to both the decision in T 726/93 (see section II above) and the interlocutory decision in J 21/94 (see section III above) were identical, ie the request in each case was in order and was not intended to have been corrected. Only the enclosed parts of the documents, the "description, claims and drawings", were intended to have been replaced by other documents because of immediately evident mistakes. This situtation is not, however, addressed by Rule 88, second sentence, EPC, as this covers corrections to parts of the documents themselves.

- "The subject-matter of the European application" is obviously the subject-matter for which protection is sought in the claims in accordance with Article 84 EPC and which is supported by the description, namely the invention as shown. The prohibition of amendment pursuant to Article 123(2) EPC relates to the "subject-matter" contained in the "content of the application". The concept of "extension" in the narrow sense of the word can only be applied in conjunction with the scope of protection of a European patent in accordance with Article 123(3) EPC. This subject-matter has to be recognisable by a person skilled in the art from the disclosure on the filing date in order for that person to then be able to establish whether, in the case of a correction under Rule 88, second sentence, EPC there is an inadmissible amendment or whether it is simply a case of correcting obvious, objectively recognisable errors.

- In J 21/94 (section III above) a skilled person could never have deduced an objectively recognisable mistake from the "content of the application", unless all the parts of the European patent application according to Article 78(1) EPC had been available to him.

- J 21/94 (section III above) concerns the interpretation of what was possibly an initially incorrect procedural step, that is the enclosure of the wrong photocopies with the right request. It is therefore a special case which is not covered by Rule 88, second sentence, EPC, which relates to amendments to the content of the parts containing the disclosure.

V. The President of the European Patent Office essentially commented as follows, in accordance with Article 11a of the Rules of Procedure of the Enlarged Board of Appeal, on the referred point of law:

- The subject-matter for which the applicant is seeking protection must be established on the filing date. If the documents filed meet the requirements of Article 80 EPC, the applicant is accorded a filing date for them. The filed documents may be amended or corrected at a later date if there are mistakes in them. However, such a correction may not lead to subject-matter being introduced into the application for the first time which was not disclosed on the filing date. The strict requirements of Article 80 EPC cannot however be circumvented by applying Rule 88 EPC, a provision of the Implementing Regulations. Rule 88 EPC accordingly becomes applicable when mistakes in filed documents for which a filing date has been accorded have to be corrected.

- Exchanging all the documents pertaining to an application affects the disclosure to a much greater degree than correcting individual parts of these documents. As individual parts of an application may only be corrected provided the corrections do not affect the original disclosure, the entire disclosed content of the application may not be replaced under any circumstances.

- In the case of the designation of contracting states, it is the territorial effect of an application which is affected, whereas replacing the application documents affects the original disclosure.

- When the EPC was drawn up, the legislators quite deliberately established different requirements for the correction of different kinds of mistakes in application documents. The correction of the parts of the application containing the disclosure of the invention was quite deliberately intended to be allowable under restricted conditions only.

- The question of whether application documents can be replaced under Rule 88 EPC is of considerable practical significance, and not just as far as the examination procedure is concerned. It also relates to the original disclosure, ie the disclosure available on the filing date, and can thus be a significant factor in opposition proceedings under Article 100(c) EPC as well. According to Article 138(1)(c) EPC inadmissible extension is also a ground for revocation.

- To allow a correction which extends the disclosure actually contained in the application documents on the date of filing may create a legal uncertainty comparable with that created in the case of Article 138(1)(c) EPC with regard to the right to claim priority from a European patent application. Article 4 A.(2) of the Paris Convention states that any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties will be recognised as giving rise to the right of priority. However, nothing indicates that the country in which the subsequent application is filed should recognise as the filing date a date on which in actual fact no application was filed. A correction in the form of replacement of the application documents actually represents the first filing in the corrected form.

- Even if it were to be assumed that the correction had a retroactive effect, the fact cannot be ignored that this retroactive effect is only a fiction and that the documents were not in actual fact available on the filing date. Accordingly, any country of the Union can conclude that no priority right exists, or at least not with the original filing date, on the basis of the "exchanged documents". The same applies to the interpretation of Article 87(2) EPC by the national revocation authorities.

- Rule 91.1(c) PCT states that omissions of entire elements or sheets of the international application, even if clearly resulting from inattention, at the stage, for example, of copying or assembling sheets, are not rectifiable.