Error correction in filed documents
The person making the error
For an error to be correctable, it must originate from the person responsible for the file:
- the applicant if they have no representative;
- the representative if they are acting on behalf of the applicant.
However, if the applicant makes an error in their decision and communicates an erroneous (but unambiguous) instruction to the representative, this will not be subject to correction (T610/11).
Deadline for filing a correction request
The request may be filed:
- if the correction risks compromising the legal certainty of third parties:
- after completion of the technical preparations for publication, if it is apparent from the published application that the application contains an error (e.g., an evidently inconsistent claimed priority, J2/92 and Guidelines A-V 3),
- otherwise, before completion of the technical preparations for publication (J21/84 and Guidelines A-V 3; if a decision is pending at the time of completion of the technical preparations, a note is included in the publication),
- otherwise, at any time (J21/84 and Guidelines A-V 3) and without delay (G1/12):
- but only until the decision to grant the patent is handed over to the internal mail service (written procedure) or until the decision is pronounced (oral proceedings) (Guidelines H-VI 2.1) for corrections to the description, claims, or drawings.
- where applicable, in opposition or limitation proceedings (Guidelines D-X 4.3).
Types of errors
Principle
An « error » within the meaning of Rule 139 EPC exists in a document when the document does not reflect the true intention of the person on whose behalf it was filed (J7/19).
In other words, there must be a discrepancy between the actual intention of a party and their declaration. The correction must introduce what was originally intended.
The error cannot relate to a misunderstanding or misinterpretation by a person who then made the wrong choices (J7/19).
Error concerning the applicant
An error concerning the identity of the applicant (e.g., the person incorrectly designated is part of the same group as the true applicant) may be corrected if sufficient evidence is provided (J7/80 and J18/93).
Correction of priority
It appears possible to request a correction under Rule 139 EPC. However, a number of conditions must be met:
- date and State of filing of the earlier application (Guidelines A-V 3):
- the request for amendment must have been filed sufficiently early to be taken into account before publication (e.g., simple mention of the correction in the publication);
- or, if this is not the case,
- if the error is obvious (J8/80) or the information is manifestly inconsistent (J3/91 and J2/92). Regarding this point, the error must be obvious to the public (who is not a qualified patent engineer familiar with the procedure and the practices of the profession, J11/18);
- if it is apparent from the published application that an error was made (J6/91);
- if the remainder of the proceedings cannot lead the public to believe that the priority claim was correct (T713/02);
- if another priority is added and is later in time (J4/82);
- filing number:
- it is possible to correct it at any time, even after publication, since the incorrect number cannot prejudice the rights of third parties (provided that the priority document is in the file, J3/91).
Normally, this correction is carried out by the formalities officer (« Decision of the President of the European Patent Office, dated 12 December 2013, concerning the delegation to non-examining staff of certain tasks of the examining or opposition divisions« , OJ 2014, A6, point 22). However, if the formalities officer makes a correction, this does not mean that the matter is definitively settled (T713/02).
Missing or incorrect drawings
A missing or incorrect drawing may be corrected if the person skilled in the art can derive the missing drawing or the correction to be made to the incorrect drawing from the description (i.e., without contravening Article 123(2) EPC) (J4/85).
The priority document cannot be of any assistance for this correction (G3/89, G11/91 and Guidelines H-VI 2.1).
Incorrect disclosure
Criterion
To correct an error in the disclosure, the following must apply (Guidelines H-VI 2.1):
- The error must be obvious from the disclosure;
- The correction must be obvious (in particular, it is not possible to replace the entire description, Guidelines A-V 3).
EPC Article 123(2) must thus be complied with (T514/88 and Guidelines H-VI 2.2.1).
Furthermore, the features in « error » should never have been presented as essential (T2058/18). If during the proceedings the feature was used to distinguish over the prior art, it is difficult to argue afterward that it was an error.
Basis of the analysis
It is necessary to consider, as of the filing date, what the person skilled in the art could objectively and unambiguously derive directly from the filed documents, possibly based on their common general knowledge (Guidelines A-V 3).
If it is not possible to rely on claims filed after the filing date under EPC Article 58, or any other document filed after the filing date (except to prove the common general knowledge of the person skilled in the art G11/91), it is possible to use missing parts filed under EPC Article 56 (Guidelines A-V 3).
The priority document cannot be of any assistance for such correction (G3/89, G11/91 and Guidelines H-VI 2.1 or T2058/18).
The use of the abstract to support a correction is not possible (G3/89, G11/91).
Competent authority
In the case of correction of the disclosure, the examining division is competent, even if the request is filed before it becomes competent (J4/85), as technical expertise is required for such correction.
Withdrawal
Withdrawal of the designation of a State
It is possible to correct the withdrawal of a designation by error under EPC Rule 139, but this must comply with certain conditions (J10/87):
- At the time of the cancellation of the withdrawal, the withdrawal has not been officially made known to the public;
- The withdrawal is due to an excusable oversight;
- The cancellation does not cause any significant delay in the proceedings;
- The EPO has ensured that third parties who may have become aware of the withdrawal by consulting the file are protected (e.g., no request for file inspection has been made).
Withdrawal of the application
Regarding the withdrawal of the application, its correction is no longer possible under Rule 139 EPC:
- if the public has been informed of such withdrawal in the EPO Bulletin (J15/86) or
- if the withdrawal has been recorded in the European Patent Register (J25/03).
Furthermore, if none of the above conditions is met, it is then possible to correct the withdrawal while complying with certain requirements (J10/87, applicable by analogy):
- at the time of cancellation of the withdrawal, the withdrawal has not been officially made known to the public;
- the withdrawal is due to an excusable oversight;
- the cancellation does not cause any significant delay in the proceedings;
- the EPO has ensured that third parties who may have become aware of the withdrawal by consulting the file are protected (e.g., no request for file inspection has been made).
Omission of a payment or error in the amount
Rule 139 EPC does not apply:
- to the omission of a payment (J21/84, T152/85);
- to the payment of an incorrect amount (T170/83, J21/84 and Guidelines A-X 7.1.1), as no document has been produced (contra T1000/19);
- to erroneous debit orders (T170/83 and Guidelines A-X 7.1.1, contra T1000/19).
However, Rule 139 EPC applies:
- if the current account indicated is incorrect or missing (T1000/19);
- if an error is made on the payment form (T71/21).
Effects
A correction under Rule 139 EPC takes retroactive effect as of the initial filing date (J3/91, J2/92) and restores the application in the form it should have had at the filing date if the error had not been made (J4/85).
Thus, if an appeal fee is corrected using Rule 139 EPC, it will be deemed to have been correctly paid and the appeal validly filed (J8/19).
Correction of errors in decisions
Time limit for filing a request for correction
No time limit (prior case law)
For a time, the EPO considered that any decision could be corrected under R140 EPC regardless of the date.
Indeed, if the EPO had granted a patent based on a Druckexemplar containing errors (e.g., missing page), the text of the patent could be replaced by the text on which the examining division actually intended to base its decision (T850/95).
No correction after grant
However, the Enlarged Board of Appeal reversed this case law (G1/10) and this practice.
Indeed, the Enlarged Board held that R140 EPC did not allow correction of the text of a patent (T506/16) (even if an opposition is filed): the EPO is no longer competent once the patent has been granted.
Thus, only decisions prior to grant could be corrected in order to protect the rights of third parties.
Type of errors
R140 EPC provides that certain errors may be corrected in EPO decisions:
- errors of expression,
- transcription errors, and
- obvious mistakes.
Such correction must be requested from the instance that issued the decision.
Nevertheless, caution is required: it is not possible to indirectly correct errors made in the application documents or patent documents by the applicant or the patent proprietor by rectifying an EPO decision.
Effects
The rectification then has retroactive effect (T212/88).
Absence of error
If the decision is legally incorrect but does not contain an error as such, the legal remedy is not R140 EPC as described above but an appeal.
For example, this may be the case if the examining division grants a patent stating that it has taken into account the amendments proposed by the applicant, whereas the Druckexemplar does not contain these amendments: only an appeal will resolve this contradiction (T1869/12).
Correction of the description following a translation
It is always possible to bring the text of the application into conformity with the text as filed (A14(2) EPC) since the filed text is authoritative (A70(2) EPC, T2202/19).
However, in opposition proceedings, the correction must not extend the scope of protection (A101(3) EPC together with A123(3) EPC).