J 0006/91 (Correction - Priority declaration) 01-12-1992

Reasons for the Decision

1. The appeal is admissible.

2.1 The case law of the Legal Board of Appeal relating to correction of errors and mistakes in documents filed with the EPO under Rule 88 EPC has developed on an ad hoc basis since 1980. The first cases to be decided concerned requests for correction of designations of States in European patent applications. The principles established were subsequently applied to cases concerned with correction of errors in priority declarations as to date and State of previous filing.

2.2 In Case J 08/80 (0J EPO 1980, p. 293), the first appeal under Rule 88 EPC to come before the Board, the Board for that reason explained the law and the procedure to be followed in cases of requests under Rule 88 EPC. It established the following general principles to be applied in all such cases:

(1) for the purposes of Rule 88 EPC a mistake may be said to exist in a document filed with the EPO if the document does not express the true intention of the person on whose behalf it was filed. The mistake may take the form of an incorrect statement or it may result from an omission. Correction, accordingly, can take the form of putting right an incorrect statement or adding omitted matter (point 4 of the grounds for the decision);

(2) for correction to be allowed, the EPO must be satisfied that a mistake was made, what the mistake was and what the correction should be (point 5 of the grounds for the decision);

(3) where the making of the alleged mistake is not self- evident and in cases where it is not immediately evident that nothing else would have been intended than what is offered as the correction, the burden of proving the facts must be a heavy one. Provisions designed to facilitate correction of mistakes cannot be allowed to be used to enable a person to give effect to a change of mind or subsequent development of plans (point 6 of the grounds for decision).

In that case, where the request for correction had been made less than a month after filing the application, it was observed that, because the request for correction had been made promptly, it was unnecessary to consider whether the right to obtain correction was subject to certain inherent time limitations (point 10 of the grounds for the decision).

2.3 In the next case concerning Rule 88 EPC, J 12/80 (OJ EPO 1981, 143), the Legal Board of Appeal referred to the above mentioned observation and stated " In the present case, there is no doubt that the application for correction was made promptly" (point 7 of the grounds for the decision). The headnote to the case interpreted this statement as follows: "Correction of mistakes in the request for grant of a European patent is not excluded, provided the request for correction is made promptly...".

In this case, the application had been published without the designation of Switzerland, while the appeal was pending. Thus, the question arose of the public interest in knowing with certainty the legal position. However, the appellant had had no control over the publication and the Board held it would not be right to refuse correction of the mistake, if the appellant was otherwise entitled to it, because of the intervening publication.

The Board concluded: "Rule 88 EPC does not contain any express provision protecting third parties such as is found in Article 122(6) EPC, to deal with comparable situations arising where restitution of rights is granted. In the absence of specific provision in the EPC, the solution of any problem of third party rights must be left to the national Courts of competent jurisdiction" (point 9 of the grounds for the decision).

2.4 This case law was further clarified in Case J 03/81 (OJ EPO 1982,

100). This case established two principles, which subsequently have been consistently followed by the Legal Board of Appeal.

(1) The general rule must be that a request for correction of a mistake in designating States in a European patent application by adding the designation of another State must be refused in the public interest, if it is made too late for a warning to third parties to be added to the published application (point 6 of the grounds for the decision).

(2) Where an international application filed under the PCT is deemed to be a European patent application, the same general rule must apply, in the public interest, even though publication by the International Bureau of WIPO necessarily precedes the time at which the applicant can request the EPO to correct any mistake in the application. The applicant, however, may ask the International Bureau to publish a warning in which case a request for correction under Rule 88 could be allowed (point 9 of the grounds for the decision).

2.5 In two decisions dated respectively 21 July 1982 (J 04/82, 0J EPO, 1982, 385) and 19 January 1983 (J 14/82 (0J EPO, 1983, 121), the Legal Board of Appeal held that the same conditions as those developed for the correction of designation of States should apply to requests for correction of declarations of priority. In those decisions, the Board allowed the requests, holding that a mistake in a declaration of priority may be corrected under Rule 88 EPC, first sentence, provided that correction has been requested sufficiently early for a warning to be included in the publication of the application. Both of these decisions concerned multiple priorities and in each case the earliest priority had actually been claimed in the uncorrected Request for Grant, while subsequent priorities had been omitted. It followed that the time table for publication of the application in accordance with Article 93(1) EPC, as soon as possible after the expiry of a period of eighteen months from the date of priority, was unaffected by the acceptance or refusal of the request for correction.

In J 14/82, moreover, the Board found that in the event that a warning is not published, the question whether the public interest would be adversely affected by allowing the correction must be considered, taking into account any special circumstances of the case (point 5 of the grounds for the decision).

2.6 The first case to deal with the omission of a first (and only) priority, Case J 03/82, was dated 16 February 1983 (OJ EPO 1983,

171). Correction of the omission was allowed, although a warning had not been published because the EPO was responsible for the failure to publish. The Board allowed the correction as an exception to the general principle that "If, by mistake, a claim to priority is omitted from a request for grant form, and the effect of allowing correction of the mistake would be to make the date for publication of the application, prescribed by Article 93(1) EPC earlier, then the request for correction of the mistake must be received by the EPO in sufficient time for the application to be published on the appropriate date, including the necessary warning to the public that the request for correction has been made" (headnote of the decision).

The principle that a request for correction of a priority claim should be made early enough for a warning to third parties to be added to the application as published was followed in Case J 21/84 of 29 November 1985 (OJ EPO 1986, 75).

In J 08/89 of 4 July 1989 [1990] EPOR 55, in a case concerning the correction of a State designation, the Board held that "It is an established principle that save in exceptional circumstances the designation of States will not be corrected if the application for correction is made too late to be noted in the publication of the application". In that case, the Board described exceptional circumstances as including "when publication took place prematurely or was erroneous, in either case due to no fault of the applicant or his representative" (point 3 of the grounds for the decision).

2.7 The last case in which a correction of a priority declaration was considered was J 11/89 dated 26 October 1989 (unpublished). In that case, the applicant had omitted to claim a second and later Japanese priority and filed a request for correction only after publication of the application. However, he had supplied a copy of the later Japanese priority document to the EPO at the same time as he filed a copy of the duly claimed priority document within the 16-month period laid down by Rule 38(3) EPC. This discrepancy was noted by the Receiving Section but no action had been taken to inform the Applicant. The Board allowed the correction even though it had been requested after publication without any warning to the public because of the special circumstances of the case. These were: the circumstances did not indicate any lack of diligence on the part of the representative; it would have been proper and an action of good faith for the Receiving Section to draw the discrepancy to the attention of the applicant; the fact that the omitted priority claim referred to a later application than that actually referred to in the publication of the application. 2.8 In a recent case, J 07/90 of 8 August 1991 (to be published), a case concerning correction of a State designation, the Board upheld the requirement that a request for correction must be made early enough to enable a warning to be published together with the European patent application.

3. The present case law of the Legal Board of Appeal with regard to correction of errors with respect to designation of States and priority claims under Rule 88, as developed since 1980, may be summarised as follows:

(1) a mistake exists where a document filed with the EPO does not express the true intention of the person on whose behalf it was filed;

(2) a mistake may be an incorrect statement or result from an omission;

(3) the burden on the applicant of proving that a mistake has been made, what the mistake was and what the correction should be is a heavy one; Rule 88 may not be used to enable a person to give effect to a change of mind or subsequent development of plans;

(4) the request for correction must be made promptly and, except in exceptional circumstances, sufficiently early for a warning to be included in the publication of the application;

(5) in the case of international applications filed under the PCT, pursuant to Article 158(1) EPC, publication by the International Bureau of WIPO under Article 21 PCT takes the place of publication in the European patent bulletin;

(6) where no warning is published, the question whether the public interest would be adversely affected by allowing the correction must be considered; to date, correction of a priority without warning to the public has only been allowed where the above conditions have been fulfilled and there have been the following special circumstances:

(i) the EPO was partly responsible for the fact that no warning was published; and/or

(ii) the interest of the public was not seriously affected; for example, the mistake was obvious on the face of the application as published; only a second or subsequent priority was added; or the public was otherwise informed about the full scope of protection sought by the applicant.

The Board points out, however, with regard to (i) above, that in these decisions the contributory responsibility of the EPO was due to the uncertainty of the office as to how to proceed at a time when the legal situation and the practice of the EPO were not clear with respect to correction of errors under Rule 88 (cf. J 21/84 (point 5 of the grounds for the decision).

4. To date the majority of requests for corrections under Rule 88 which have been adjudicated upon by the Board have concerned designations of States and priority declarations. So far as errors in claiming priority are concerned, all requests for correction have concerned omissions of date and State of a previous application. As mentioned in paragraph IX above, there are at present pending before the Board, however, cases in which correction of mistakes in the form of typographical errors made in declarations concerning the date and State of previous applications have been requested and it is necessary to consider if and to what extent the rules applying to the correction of such errors may differ from the requirements with respect to omissions. The findings of the Board on this issue are set out in its decision in J 03/91 (Uni-Charm).

5.1 In the present case, applying the conditions for correction of an omitted priority established by the case law of the Board, as set out in paragraph 3 above, the Board is satisfied that a mistake exists, what it is and what the correction should be. The applicant and appellant omitted to claim priority from a previous application which preceded by four days the date of the application from which priority had in fact been claimed in the international application. The request for correction, however, was not made sufficiently early for a warning to be included in the publication of the application by the International Bureau of WIPO (in this case the relevant publication pursuant to Article 158(1) EPC).

5.2 The questions arise therefore whether the public interest would be adversely affected by allowing the correction and whether there are any special circumstances in this case which would permit an exception to the rule that the request for correction must be made sufficiently early for a warning to be included in the publication of the application. In deciding this matter, the Board takes account of the fact that, as seen above (paragraph 2.3), in the absence of any express provision protecting third parties in Rule 88, the solution of any problem of third party rights must be left to the national Courts of competent jurisdiction (J 12/80). This Board has also found that such rights would be sufficiently protected by a national court applying Article 122(6) EPC mutatis mutandis (J 10/87, OJ 1989 323).

5.3 The applicant has claimed that Rule 88, first sentence, EPC, does not make corrections dependent on a time limitation being observed but makes the allowability of corrections a matter of discretion on a case-by-case basis. The applicant relied also on Article 150(3) EPC which provides that an international application, for which the EPO acts as a designated Office or elected office, shall be deemed to be a European patent application. It followed that publication of a warning in the European Patent Bulletin would have been sufficient. In relation to these arguments, the Board upholds its case law. As the Board said in J 07/90 already referred to, " Rule 88, first sentence, EPC in no way compels the EPO to permit the correction of errors of any kind at any time. All three texts of this rule ("können" -"may be" - "peuvent") give the EPO the authority to permit certain types of correction at its discretion, which also means that corrections can be made dependent on conditions. A time limitation is a reasonable condition if... correction is to be permitted at all" (point 2.2 of the grounds for the decision). A time limitation imposed by the Legal Board of Appeal in the public interest is hardly arbitrary. Publication of a warning in the European Patent Bulletin at the time of the mention therein of the international application is not an alternative option; as seen above, according to Article 158 EPC, publication under Article 21 PCT of a Euro-PCT application takes the place of the publication of the European patent application.

5.4 The appellant requested that an exception be made to the principle that the public be warned in this case, relying on previous decisions where the need to warn the public had yielded to the justified interest of the applicant. It was submitted that the omitted priority date was only four days earlier than that actually claimed and that the informed public would have been capable of suspecting a mistake in the priority claim because the international application was a continuation-in-part application of the omitted priority application details of which were given in the first paragraph of the description of the published international application. This, it was submitted, represented sufficient warning to the public. The fact that the omitted priority date was only four days earlier does not of itself help the appellant. As the Board found in J 14/82, "A European patent application is published early, in accordance with Article 93 EPC, in order to inform the public about the existence of a potential European patent. Not only the technical content and the designated States concerned are of importance for the information of third parties but also the filing date and any priority date. In principle, the public should be entitled to rely on the published information as being both accurate and complete" (point 6 of the grounds for the decision). The Board finds that, in the public interest, this principle is of overriding importance in the case of a first or only priority unless it is apparent on the face of the published application that a first or only priority may be missing or wrong or that the date of a first or only priority is wrong (as for example in the case of an inaccurate transcription of a Japanese date, cf. J 03/91 (Uni-Charm)).

5.5 The appellant argues that in this case it was apparent on the face of the published application that the earlier priority was missing. The international application, which actually claimed priority from a continuation-in-part application dated 8 February 1988, was itself presented as a continuation-in-part application and the first paragraph of the published description was headed and read as follows:

"Background of the Invention

Cross-References to Related Application

This application is a continuation-in-part application of Serial No. (CR-8641) filed on February 4, 1988."

The Board finds that, taken alone, the fact that the international application was itself presented as a continuation-in-part application would not be sufficient to warn the informed public that a first priority might be missing. A continuation-in-part is a second application repeating some substantial portion or all of the earlier application and adding matter not disclosed in the earlier application. Claims that are dependent upon new matter added by a continuation-in-part application are entitled to the filing date of the continuation-in-part, not that of the parent application (see Chisum, Patents, Vol. 4, 1992, 13.03 [3]). The fact that the application from which priority was claimed was a continuation-in-part application would not necessarily imply therefore that there was an earlier priority which should have been claimed. However, in the particular circumstances of this case, the Board finds that the fact that the international application was presented as a continuation-in-part application, taken together with other factors in the case, which would have been apparent to the reader from the first two pages of the published international application, would have been sufficient to put the informed public on notice that a first priority might be missing or that a typographical error had been made. These factors are the following:

the date of the priority actually claimed and that of the earlier application of which the international application was presented as a continuation-in-part were only four days apart (8 and 4 February respectively), which is unusual; the filing date of the international application was 3 February 1989 and therefore it was within the priority year of the 4 February 1988 application and in time to claim priority therefrom.

The fact that the international application was filed on 3 February 1989 would suggest that the applicant intended to claim the priority of 4 February 1988 and that therefore a first priority was missing. Another explanation for the discrepancy which could occur to the informed public would be that the date of 8 February given for the date of the priority actually claimed was a typing mistake. This conclusion could be drawn because it is not clear from the published application whether the application from which priority was claimed and the original application of which the present application is presented as a continuation-in-part were one and the same (only the applicant's serial number for the latter application being given).

5.6 The Board finds, therefore, that in this case an exception to the general rule that a request for correction should be made sufficiently early for a warning to be included in the publication of the application is justified and that the requested correction by way of addition of the omitted priority date should be allowed. The Board is satisfied that the public interest is safeguarded by the fact that it was apparent from the face of the published application that a mistake may have been made with respect to the priority date claimed. The Board has also taken account of the fact that the applicant and appellant acted promptly and that the patent grant procedure, and entry into the regional phase, including publication of the application after 18 months, has not been held up in any way.