4.1. Correction requests as opposed to appeals

In T 425/97 the board referred to G 8/95 (OJ 1996, 481), which dealt with the scope of R. 89 EPC 1973 (now R. 140 EPC), stating that the difference between an appeal against a decision and a request for correction of a decision might be seen in the fact that in the first case the remedy was directed against the substance of the decision and in the latter case against the form in which the decision was expressed. In another decision issued prior to G 1/10, the board in T 1093/05 (OJ 2008, 430) similarly held that, if a grant decision was defective, the patent proprietor had to consider carefully the nature of the defect and how it could best be rectified. If it involved a substantial procedural violation, rectification was possible only on appeal.

In T 1869/12 the board stated that in case of procedural violations in the granting procedure, rectification is only possible via appeal against the decision to grant. A correction of the published European patent specification or of the decision to grant cannot be allowed when this specification corresponds to the true intention of the Examining Division when granting the patent.

In T 1869/12 the appellant (applicant) lodged an appeal against the decision of the examining division refusing to correct the published European patent specification. It tried to achieve, via correction of the decision to grant, the patent to be comprising the set of claims proposed by the examining division with a communication under R. 71(3) EPC, however, with substantive amendments as subsequently proposed by the appellant. The board based its decision on G 1/10 and also stated that the appellant's request could not be granted, since it was clear that the examining division intended – and maintained that intention – to grant the patent with its own proposed claims. Therefore, the appellant should have filed an appeal against the decision to grant the patent.

In T 1558/21 the board held, for the reasons below, that once announced at oral proceedings, the decision to maintain the patent as amended according to auxiliary request 1’, which had been filed in writing, could not be corrected retrospectively based on R. 139 EPC and R.140 EPC, but could only be challenged by filing an appeal. Auxiliary request 1’, as filed in writing, had become an integral part of the decision announced by the opposition division. It was nevertheless not possible to correct its claims 1 and 8 under R. 140 EPC, which only allowed for the correction of obvious mistakes such as bibliographical errors in decisions. In addition, the requirement of an obvious mistake in the sense of a mistake that would be immediately recognised by a third party was not met either.