News from Abroad: Patentees Denied Opportunity to Correct European Patent Text After Grant

[author: Charlotte Teall]


EPORule 140 EPC does not explicitly relate to the correction of patents, but to the correction of EPO decisions.  However, until now, the European Patent Office (EPO) has allowed patentees to correct the text of a Patent after grant using Rule 140 EPC.

Recent decision (G1/10)

The Enlarged Board of Appeal at the EPO has decided that this practice must now stop.  Patentees can no longer use Rule 140 EPC to "tidy-up" errors in their patents.

The Board's main reason was that this practice can have a negative effect on third parties, who rely on the text of the patent when it is granted.  For example, a third party may decide not to file an opposition based on the granted text, but may then be threatened by the corrected patent and prevented from contesting the correction by filing an opposition because the opposition period has expired.

The Board said that preventing post-grant correction is not unfair for the patentee because the patentee can correct errors in the patent before grant.  The patentee is given the opportunity to check the text that the EPO intends to grant and must approve that text before it can be granted.  If the patentee fails to do this then the responsibility for the errors is his alone, and not the fault of the EPO for granting the erroneous text.

In any case, since the EPO should only allow a correction if it is an obvious error, the patent should be read as if the error was not there.  Therefore, it will not matter if an actual correction is made.

What this means

Patentees can only change the text of a patent at the EPO by requesting amendment during opposition or proceedings to limit the claims.  Amendments are subject to different rules than corrections.  In particular, they can only be made in response to an opposition ground or to bring the description.  As a result, it is less straightforward to get an amendment allowed than a correction.

It is even more important than before to carefully check the text that the EPO intends to grant, and correct any errors before paying the grant fees or filing claims translations.

A granted European Patent is effectively a bundle of national patents that are subject to national laws.  The laws on amendment and correction of patents after grant vary in each country.  While a patentee may not be able to correct the text of a patent at the EPO, such correction may still be possible in certain designated states.

This article was reprinted with permission from Forresters.


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McDonnell Boehnen Hulbert & Berghoff LLP on:

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