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New EBA referral G 1/10: the EPO considers the handling of post-grant corrections during European Opposition
25/07/2010
A new EPO referral to the Enlarged Board of Appeal has been made, and has been allocated referral number G 1/10. The questions referred relate to the procedure for correcting errors in patent documents during the post-grant Opposition stage. The outcome of the referral will have an influence on this aspect of Opposition procedure and the referral also indicates how seriously the "right to be heard" is taken by the EPO.
The Opposition which has given rise to the referral is unusual, in that it is based on only one ground of objection, that of "added subject matter". The additional subject matter is said by the proprietor to arise from a typographical error inserted into claim 1 during examination, which was not noticed by the EPO before grant. The error is the replacement of the word "portion" with the word "position". The patent proprietor asked for the Opposition to be stayed and requested that the case be sent back to the Examining Division for correction of the error under Rule 140 EPC.
In this particular circumstance, since the Opposition is only founded on one ground of opposition, there is a possible source of unfairness to the parties if the Opposition Division accepts the request for the case to be sent back to the Examining Division. The 2008 Board of Appeal decision in T 79/07 stated that if a patent is corrected post-grant, the Opposition Division must simply accept the corrected version. If the Examining Division were to allow the requested correction, and if the Opposition Division follows T 79/07, the correction could not be discussed in opposition proceedings. In that situation, since the existing Opposition only contained a single ground of opposition which would have disappeared, the Opposition would apparently fail with no legal remedy for the opponent. The unlucky opponent would not be able to appeal the Examining Division decision to allow the correction, because it would not be a party to those proceedings. However, the proprietor would be allowed to appeal if the Examining Division decided against them, resulting in a disparity in the rights of the parties to be heard.
There is conflicting case law from the Boards of Appeal, in the form of decision T 268/02, in which the Opposition Division was held to be able to review corrections allowed under Rule 140. The Board of Appeal has therefore decided to refer the matter to the Enlarged Board for guidance.
The questions referred by the Board of Appeal are:
1. Is a patent proprietor's request for correction of the grant decision under Rule 140 EPC which was filed after the initiation of opposition proceedings admissible? In particular, should the absence of a time limit in Rule 140 EPC be interpreted such that a correction under Rule 140 EPC of errors in decisions can be made at any time?
2. If such a request is considered to be admissible, does the examining division have to decide on this request in ex parte proceedings in a binding manner so that the opposition division is precluded from examining whether the correction decision amounts to an unallowable amendment of the granted patent?
These questions will now be considered by the Enlarged Board of Appeal. We will keep you advised of the progress and outcome of these proceedings.
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