Pursuant to Rule 71(3) of the European Patent Convention
(EPC), towards the termination of the examination proceedings,
the Examining Division of the European Patent Office (EPO)
shall inform the applicant of the text in which it intends to
grant the European patent. Following Rule 71(5) EPC, if the
applicant subsequently pays the grant and publishing fees and
files the required translations of the claims, he shall be
deemed to have approved the text intended for grant.
In examination proceedings pertaining to EP 2 396 848, in
the communication under Rule 71(3) EPC, the Examining Division
made reference to the claims submitted by the applicant in the
list of documents intended for grant. However, the EPO had left
out parts of the claims from the text intended for grant
itself. The applicant apparently overlooked the flaw and
proceeded by complying with the provisions of Rule 71 EPC, and
the patent was subsequently granted in a form from which parts
of the claims were missing.
Following the issue of the printed patent, the B1
publication, the applicant requested correction under either
one of Rules 139 or 140 EPC, correction of a purported printing
error, or that the decision to grant the patent be considered
null and void. Neither the Examining Division nor the Board of
Appeal allowed either of these requests. In its decision T
506/16, the Board of Appeal notes that:
- Rule 140 EPC is not available for
correcting patents in accordance with Enlarged Board of
Appeal decision G 1/10.
- Rule 139 EPC is only applicable to
documents filed with the EPO, i.e. not to documents produced
by the EPO.
- The obligation to check the text in which
the patent will be granted lies with the applicant.
- The decision to grant did not infringe the
principle of good faith and the protection of the legitimate
expectations of the users of the EPO.
The applicant's attempt to reinstate the missing parts of
the claims did not thus succeed, despite the fact that it was
the EPO's Examining Division that included an incomplete set of
claims in the text intended for grant.
|Jakob Pade Frederiksen
Kogle Allé 2
Tel: +45 7070 2422
Fax: +45 7070 2423