Abstract on EPC2000 R 139 for the decision J0003/21 of 07.02.2023

In J 3/21 the appeal was filed against the decision of the Receiving Section to reject the applicants' (appellants') request for correction of the originally filed application documents. The Legal Board recalled that, according to established jurisprudence, the general principle was that each party bears the burden of proof for the facts it alleges. This principle applied no less to a proposed correction under R. 139 EPC. In addition, the party had to establish such facts to the rigorous standard of "beyond reasonable doubt" (T 1248/08, T 723/02 and T 581/19). The applicants had not provided any evidence for the alleged obvious errors of originally filing 25 Chinese claims instead of 15 (main request), and of originally filing the application in Chinese instead of in English as intended (first auxiliary request). The indications in EPO Form 1001 itself regarding the number of claims and the specification in the admissible non-EPO language were, in light of the indicated filing language and of the de facto filing of 25 Chinese claims, not enough to dispel a reasonable doubt about the applicants' alleged facts. Furthermore, the applicants had failed to prove the obviousness of the corrections sought, i.e. why it was immediately evident that nothing else would have been intended than what was offered as corrections by the main request and the first auxiliary request (R. 139, second sentence, EPC). The applicants thus failed to fulfil their burden of proof. For this reason alone, neither the main request nor the first auxiliary request were allowable. For the sake of argument, the Legal Board observed that the Receiving Section had not exceeded its competence (Art. 16 in conjunction with R. 10(1) EPC) when deciding on the request by the applicants to correct at least the description of the originally filed Chinese application by replacing it with at least that of the English translation filed on the same day. The ban on such corrections, established in G 2/95 on the basis of Art. 123(2) EPC and further developed in e.g. J 5/06 and J 16/13, was categorical and followed from the principle reflected in R. 40(1)(c) EPC that the accorded filing date is inseparable from the description as originally filed. An exchange of the description by way of correction would directly result in the separation of the filing date from the description in contravention of Art. 123(2) EPC. Refusing such a request for correction did not require any technical examination and technical qualifications, and this principle applied irrespective of any intention of the applicant.