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Guidelines for Examination

 
 
5.1
Admissibility of corrections 

Correction of errors in decisions must be clearly distinguished from correction of errors in documents filed by the applicant (or patentee) pursuant to Rule 139. For the latter, see A-V, 3 and H-VI, 4.2 and subparagraphs. Correction of errors made by the applicant (or patentee) in application (or patent) documents cannot be arrived at in a roundabout manner through correction of the decision to grant (or maintain in amended form).

Correction of a decision is admissible only if the text of the decision is manifestly other than intended by the department concerned. Thus only linguistic errors, errors of transcription and obvious mistakes in decisions can be corrected. The correction of a mistake in a decision under Rule 140 has a retrospective effect (see T 212/88).

The documents approved by the applicant for grant or approved by the patentee for maintenance in amended form are part of the decision to grant (see T 850/95) or to maintain in amended form, respectively. If a decision relates to wrong or incomplete documents, e.g. in the case of omission from a granted patent of claims, description parts or drawings which had already been filed as replacements and whose admissibility was never at issue during earlier proceedings, a correction of the text of the description or claims or of the drawings should be allowed.

Rule 140 is not available to correct errors in documents filed by a patent applicant or proprietor (1/10). Correction of such documents is admissible only under Rule 139 until the patent is granted (see H-VI, 4.2.1). After this point in time, only errors in bibliographic data or printing errors in the publication concerning the decision to grant or to maintain the patent in amended form may be corrected (see H-VI, 3 and 5.2).

However, this does not relieve,It is the duty of the applicant or patentee from the duty to properly check the documents as proposed for grant or for maintenance in amended form, respectively (see Rules 71(5), 82(2) and 95(2), (3) and 1/10).

Corrections of decisions are to be made by a decision at the reasoned request of one of the parties or by the EPO of its own motion. If the request for correction is refused, this decision must be reasoned (see T 850/95). These reasons must previously have been communicated to the requester (Art. 113(1)).

The Opposition Division cannot under Rule 140 correct errors in the decision to grant taken by the Examining Division. Even during opposition proceedings, the Examining Division is competent for taking such a decision. The Opposition Division can only correct a decision which it has issued itself.

The competence to correct errors lies with the body which took the decision. Hence, even during opposition proceedings, the Examining Division is competent for correcting errors in bibliographic data contained in the decision to grant.

If a patent is maintained in amended form under Art. 101(3)(a), there are two decisions which refer to documents on the basis of which the patent is to be maintained: the interlocutory decision issued by the Opposition Division according to Art. 106(2), stating that the patent and the invention to which it relates meet the requirements of the Convention, and the decision to actually maintain the patent pursuant to Art. 101(3)(a), which is issued automatically. Documents referred to form an integral part of these decisions. Therefore errors in documents referred to in these decisions can be corrected if one of the three types of error mentioned in Rule 140 is concerned.

References

Rule 140