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Case Law of the Boards of Appeal

 
 
3. Competence to correct a decision under Rule 140 EPC (former Rule 89 EPC 1973)

In G 8/95 (OJ 1996, 481) a question of law was referred to the Enlarged Board of Appeal to decide which board of appeal (either the technical board or the Legal Board) was competent to decide on appeals from a decision of an examining division refusing a request under R. 89 EPC 1973 (now R. 140 EPC) for correction of the decision to grant. In the view of the Enlarged Board, the basis of such a request for correction was not that the party was not granted what it had requested. Rather, such a request was based on the allegation that there was a linguistic error, error of transcription or similar obvious mistake.

The Enlarged Board noted that the competence to correct errors in a decision under R. 89 EPC 1973 (now R. 140 EPC) lay with the body which had given the decision. Hence, in the examination procedure the examining division had to decide on a request to correct errors in the decision to grant. If the request for correction of the decision to grant concerned the grant of the patent, then the decision on the correction had also to concern the grant of the patent, since it was the request of the party which defined the subject of the dispute. The Enlarged Board also agreed with the statement made in J 30/94 (OJ 1992, 516) that it was the decision to refuse the request for correction which was under appeal. According to the Enlarged Board, this did not alter the subject of the dispute before the second instance. The decisive criterion in Art. 21(3)(a) EPC 1973 was not that the decision under appeal was itself the decision to grant. It was sufficient for the decision to "concern" the grant, and this was necessarily the case if the subject of the decision was the text in which the patent was to be or had been granted, since this was the result of the substantive examination and defined the rights conferred by the patent. The Enlarged Board came to the conclusion that the decision refusing a request for correction of the decision to grant concerned the grant of the patent. It was, therefore, the technical boards as defined in Art. 21(3)(a) and (b) EPC 1973 which had to decide on appeals from a decision of an examining division refusing a request under R. 89 EPC 1973 for correction of the decision to grant.

In J 12/85 (OJ 1986, 155), the board held that a board of appeal could only examine appeals from decisions of other instances of the EPO (Art. 21(1) EPC). Thus, it could not examine a request for a correction of the decision under appeal under R. 89 EPC. A decision on this request first had to be rendered by the examining division before the matter could be referred to the board of appeal. It also held that an applicant for a European patent could only be "adversely affected" within the meaning of Art. 107 EPC by a decision to grant the patent if such a decision was inconsistent with what he had specifically requested.

In J 16/99 the board held that when correction of the priority date of a granted patent is requested, there may be a case for correction under R. 89 EPC 1973 (now R. 140 EPC) of the EPO's decision to grant. The board found that R. 89 EPC 1973 was applicable since, being applicable to errors of transcription and obvious mistakes in a decision of the EPO, it allowed the correction of errors in, inter alia, decisions to grant, without the limiting requirement that proceedings be pending.

The board also found that the formalities officer who had taken the decision under appeal had no authority to take a decision under R. 89 EPC 1973. Such decisions had to be made by the examining division (see G 8/95, OJ 1996, 481), and were not one of the category of decisions which could be delegated to formalities officers (see the Notice of the Vice-President of DG 2 of the EPO, OJ 1984, 317, as revised by the further Notice, OJ 1989, 178 - the version applicable at the time of the decision under appeal - and again revised, with no effect on the point at issue here, by Notice in OJ 1999, 504).

In T 226/02 the board considered that the opposition division had acted ultra vires in taking a decision under R. 89 EPC 1973 to correct a decision of the examining division. The board held that only the body which had taken a decision was entitled to correct it so as to put it in the form which it had intended it to take. Thus, only the examining division was entitled to correct its own decision. This finding was endorsed by the board in T 1495/09, which held that, in the case at issue, pursuant to R. 140 EPC, the opposition division in opposition proceedings had no competence to correct the decision taken by the examining division and would thus have acted ultra vires if it had corrected the grant decision. The same applied to the board of appeal in opposition-appeal proceedings (Art. 111(1), second sentence, EPC 1973).

In T 1259/09, in the course of the opposition proceedings, one of the opponents requested a correction of the decision to grant pursuant to R. 140 EPC. The opposition division forwarded this request to the examining division. In a communication the examining division informed the opposition division that no correction of the grant decision would take place. The opponent filed an appeal against this communication of the examining division. The dispute at issue was whether the appellants/opponents, by filing their request for correction, initiated proceedings before the examining division which were separate from the ex parte examination proceedings with the consequence that the appellants had become a party to the proceedings before the examining division. The board held that by filing a request for correction of the grant decision under R. 140 EPC a third party does not become a party to the examination proceedings.