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G1/10 – Portion vs Position: Where are they now?

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epologoAround this time last year, decision G1/10 of the Enlarged Board of Appeal was published by the EPO, and over at IPCopy, we’re paying it a little re-visit. ‘Why ever is that?’ I hear you cry! Well, I’m so glad you asked. Separate opposition proceedings relating to the patent in question were in progress when G1/10 was issued; the oral proceedings were scheduled for this month, and an interesting decision was due to be made, so IPCopy took a little look at the EP patents register to see what happened.

First, a quick bit of history. The patent as granted included an error in Claim 1: rather than ‘…a position of the device data’, Claim 1 recited ‘…a portion of the device data’ . A small, but potentially fatal, typographical mistake. The Druckexemplar issued with the mistake, and the patentee, not noticing the mistake at the time, had approved the erroneous text for grant. The patent was therefore granted with the error in Claim 1.

The patent was subsequently opposed, on the sole grounds of added matter: that the erroneous Claim 1 added matter over the application as originally filed, since a ‘position of the device data’ was never disclosed in the original application. With a view to skirting round the opposition, the patentee filed a request under Rule 140 EPC to correct the text of the patent. Rule 140 relates to correcting errors in EPO decisions; the patentee’s request was presumably made on the basis that the EPO could not have intended to grant the aplication when the claims contained added matter, and that therefore an argument could be made that this was an error in an EPO decision that could be corrected under Rule 140.

The question of whether or not Rule 140 could be used to correct the patent was referred to the Enlarged Board of Appeal, and the opposition proceedings were stayed pending the decision.

In G 1/10, the Enlarged Board of Appeal took the view that Rule 140 was not applicable. The decision stated that, whatever the origin of the error, once the patentee had approved the text for grant, the error was firmly in the patentee’s hands. Thus,  Rule 140 could not be used to correct a patent, and the opposition proceedings should carry on.

So, what would be the patentee’s options for overcoming the added matter problem at the opposition stage? The patentee could request an amendment, but under Article 123(3) EPC, a post-grant amendment cannot extend the protection conferred by the patent. Amending ‘position’ to ‘portion’ would clearly change the scope of the claims altogether, so this amendment would not be allowable.

Alternatively, the patentee could request correction of the error. For this to be allowable, the correction must be obvious, i.e. it must fulfil the requirement that “it is immediately evident that nothing else would have been intended other than what has been offered as a correction“.

So, would correcting ‘position’ to ‘portion’ be an obvious correction? This question caused a certain amount of heated debate around the open plan. ‘Position’ does make perfect linguistic sense, and probably even some sort of technical sense, particularly if considering Claim 1 in isolation. On the other hand, in the context of the description, in which ‘portion’ rather than ‘position’ is used, it would perhaps be arguably clear that ‘portion’ was intended. This IPCopy writer came down on the side of non-obviousness, and thought that the correction would not be allowable. Others thought differently. There may have been a wager involved.

So, with the certainty possibility of lining her wallet with a triumphantly crisp ten pound note, this IPCopy writer ventured over to the register to see if there was any news as to what had become of the patent. Would the correction be allowed?

Sadly, we will never find out. The patentee forced revocation of the patent by withdrawing approval of the text for grant, and the opposition proceedings were abandoned.

Ten pounds none-the-richer then. Ah well.

Emily Weal 14 August 2013


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