T 0603/07 02-08-2007

1. The decision on this appeal falls within the competence of this technical board and not within that of the Legal Board. The requested corrections filed with letter dated 27 September 2006 formed primarily a request under Rule 88 EPC for it was directed to a correction of errors in a document filed with the EPO. But after the decision to grant the European patent was issued without having considered the requested amendments of the description this request must be interpreted as a request for correction of errors in decisions under Rule 89 EPC and thus this appeal is directed against a decision concerning the grant of a European patent within the meaning of Article 21(3)(a) EPC see G 8/95 OJ 1996, 481).

2. The appeal is admissible.

Though the appeal was filed on 15 March 2007 together with the payment of the appeal fee and thus not within the two-month time limit with regard to the decision to grant the European patent published on 10 January 2007 the board holds the appeal filed within the time limits under Article 108 EPC. From the publication in the European Patent Bulletin 07/02 of 10 January 2007 the appellants could not become aware if the Examining Division had based the grant of the patent on the amended version of the description or not and consequently could not recognise if they were adversely affected by the decision to grant or not. Only after receipt of the "communication" of the Examining Division dated 5 February 2007 they became aware that the Examining Division had not considered their request for amendments and is of the opinion that the requested amendments could no longer be considered as it holds itself bound by the decision to grant the European patent.

Although labelled as "communication in response to a request to amend the application documents" this response to the appellants request dated 27 September 2006 forms a decision of the Examining Division not to consider the requested amendments of the description and therefore not to correct the decision to grant the European patent. This decision dated 5 February 2007 triggered the time limits under Article 108 EPC. Thus the time limits under Article 108 sentence 1 and 2 EPC are met, although the Examining Division in paragraph 3 of its decision dated 5 February 2007 - not seeing the decisive nature of its "response" - in contradiction to this mentioned the possibility of appeal against the decision to grant.

The same applies to the grounds of appeal filed on 29 May 2007 and thus meeting the time limit under Article 108 sentence 3 EPC.

3. The requested correction is allowable under Rule 89 EPC, if it removes a linguistic error, error of transcription or obvious mistake in the decision. According to the practice of the EPO the decision to grant is a form generated by Electronic Data Processing. In respect of the description, the form refers to the documents indicated in the communication pursuant to Rule 51(4) EPC. By this reference the documents approved by the applicant become an integral part of the decision to grant in the same way as if the documents were repeated in the decision itself. It follows from this that errors in the description may be corrected under Rule 89 EPC (see T 850/95 OJ 1997, 152).

In a decision to grant is an obvious mistake within the meaning of Rule 89 EPC, if the text given for grant is obviously not the text corresponding to the real intention of the deciding instance.

In the present case it follows from the Examining Division's brief communication dated 26 October 2006 that - in contradiction to the information given in its "response" dated 5 February 2007 - the appellants' letter dated 27 September 2006 reached the Examining Division about two months before the decision to grant was issued on 14 December 2006. Because in the last sentence of this brief communication the Examining Division invites the appellants to clarify this matter (i.e. the inconsistant translation of the French or German version of the claims filed with letter dated 27 September 2006) as soon as possible, "so that we can go on with the amendments requested", the Examining Division intended to base its decision to grant the European patent on a consideration of the requested amendments but, according to its "response" dated 5 February 2007, failed to do so.

The appellants requested to replace in the description on page 4, lines 10 and 11 the symbol ? by my and ny and on page 4, line 26 and page 5, line 1 the same symbol by alpha, beta and gamma. As the symbol ? is obviously a wildcard character, these amendments are directed to correct a clerical unclearness or a clerical error. The same applies for the four further requested amendments: On page 5, line 13 the same wildcard character ? should be corrected by "alpha" so that it reads "alpha-sulfonatedalkyl", on page 7, line 23 "morpholineine" should be corrected into "morpholine", on page 7, line 24 it should read "its" instead of "ist" and on page 11, line 2 "PASS" should be corrected into "PAAS".

The "response" dated 5 February 2007 did not contain any reasons as to why these amendments were held to be allowable by the Examining Division or not. But the board can assume that the Examining Division did not intend to accept the above mentioned clerical unclearness or errors in the description as a basis for its decision to grant.

As the requested amendments contribute to a correction of obvious clerical errors the board itself can correct the description (see Article 111(1) EPC).

4. The appeal fee is to be reimbursed according to Rule 67 EPC, because the appeal succeeds and the reimbursement is equitable by reason of substantial procedural violations.

During the proceedings before the Examining Division two substantial procedural violations occurred:

In the communication under Rule 51(4) EPC dated 18 July 2006 the appellants were informed that, if they do not approve the text intended for grant but wish to request amendments or corrections the procedure described in Rule 51(5) EPC is to be followed. But although the appellants requested corrections of the description within the time limit of four months set in the communication of the Examining Division (i.e. before the date of 29 November 2006), their letter dated 27 September 2006 was only taken into consideration insofar as the Examining Division informed them about the inconsistency in the French or German translation of the claims.

The amendments requested simultaneously however were not taken into consideration.

Furthermore instead to check on its own authority, if its decision to grant the European patent may be corrected according to the appellants request to be interpreted as a request for corrections under Rule 89 EPC, the Examining Division in its "response" dated 5 February 2007 held wrongly that it is bound by its decision to grant in that way, that the requested amendments can no longer be considered and therefore caused the appellants wrongly as well to file an appeal.

Thus the appeal fee paid by the appellants is to be reimbursed.