EPO, Enlarged Board of Appeal, decision of July 23, 2012 in case G 1/10, to be published in OJ EPO – Request to correct patent/FISHER-ROSEMOUNT
In the case underlying the referral of a point of law to the Enlarged Board of Appeal (EBA), the patent had been opposed on the grounds that a feature in claim 1 of the granted patent had not been disclosed in the application as filed. The proprietor of the patent argued that this resulted from a typographical error made when amending this claim during grant proceedings and that the word “position” in this feature should read “portion”.
On his request, the opposition division took the interlocutory decision to stay opposition proceedings and to remit the case to the examining division for a decision on the proprietor’s request for correction of the decision to grant under Rule 140 EPC. On the opponent’s appeal, the Board of Appeal considered that there was a fundamental point of law and referred the questions to the EBA whether a request for correction of the grant decision filed after the initiation of opposition proceedings is admissible and, if yes, whether the examining division’s decision is binding upon the opposition division.
The EBA answered the questions as follows:
1. Since Rule 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 after the initiation of opposition proceedings.
2. In view of the answer to the first referred question, the second referred question requires no answer.
In the reasons for the decision, the EBA emphasizes the need for legal certainty and the protection of third parties and notes that the proprietor has adequate remedies available to ensure that the text of the granted patent is correct.