The patent relates to a silencer unit for a motor vehicle as well to an exhaust system for a motor vehicle using such a silencer unit.
Brief outline of the case
The patent was revoked by the OD as claim 1 as granted was infringing Art 123(2). The same applied to AR 1-3.
The proprietor appealed the decision of the OD.
As a MR in appeal the proprietor filed an amended claim 1 in which an obvious error was corrected under R 139.
The opponent argued that the correction boils down to a not allowable intermediate generalisation.
In its annex to the summons, the board noted that even if the requirements under R 139 were fulfilled, the new MR only corresponds to a correction of these obvious errors. As it does not contain any further amendment of the claims, the MR does therefore not comply with the requirements of R 80.
The board did not admit the MR as it was contrary to R 80.
Claim 1 of AR 6 corresponded to claim 1 as granted. The board confirmed the decision of the OD that this claim was infringing Art 123(2).
As AR 7-11 suffered the same drawback, the board confirmed the revocation of the patent.
The proprietor’s position
The proprietor argued that a correction under R 139 must always be possible and, in particular, should be considered independently of the requirements of R 80. The proprietor referred to decision T 657/11, para. 3.4, in which the board had precisely stated this.
The board’s position
The board was not convinced by this argumentation.
“It is always open to a patent proprietor to seek to amend his patent during opposition or limitation proceedings and such an amendment could remove a perceived error. Such an amendment would have to satisfy all the legal requirements for amendments including those of Article 123”.
The teaching found in T 657/11
In T 657/11 the board noted that an amendment of the patent as granted does not constitute a correction of an error or a mistake in a decision of the EPO within the meaning of Rule 140. R 140 is thus not applicable.
A request under R 139 with the sole aim of correcting an error would not be considered to be motivated by a ground for opposition under Art 100, so that the condition set out in R 80 would not be fulfilled. The possibility of correction under R 139 applies independently of R 80.
In T 657/11 the board held that a request for correction under R 139 is implied in the proprietor’s request for further prosecution on the basis of method claims 1-6 which are, apart from the correction of a purported mistake (and the renumbering), identical to the claims 6-11 of the patent as granted. All product claims were deleted as they were infringing Art 123(2). The amendment was thus caused by a ground of opposition and in conformity with R 80.
Application of the teaching of T 657/11 to the present case
In the present decision, the board observed that it does not mean that the possibility of correction under R 139 is always available without restriction. Corrections under R 139 are a special case of an amendment within the meaning of Article 123 EPC, cf. G 3/89 and G 11/91, both point 1. R 139 contains provisions concerning the correction of obvious errors in the documents filed with the European Patent Office.
How and under what conditions these amendments are possible is set out in the Implementing Regulations under Art 123(1), first sentence. The further provisions to be observed for amendments to the European patent application are to be found in R 137, those for amendments to the European patent in R 80.
The board therefore concluded that, in line with the reasoning in T 657/11 (para. 3.4), the provisions and specific requirements of R 139 and 80 apply separately.
The exclusive correction of errors in the patent claims according to the MR does not fulfil the requirement under R 80 because it is not aimed at overcoming a ground for opposition under Article 100.
The board therefore exercised the discretion granted to it in Art 13(1) RPBA20 not to admit the MR to the proceedings.
T 1111/19 makes clear that requests under R 139 filed in opposition are only admissible if they are filed in reply to a ground of opposition, i.e. they are in conformity with R 80.
It is interesting to note that in T 657/11 the board considered that the amendment filed during opposition implies a request for correction under R 139.
It is with this reasoning that the boards in T 657/11 and T 1111/19 concluded that a request for correction under R 139 during opposition has to answer a ground of opposition as required under R 80, even if this ground has not been raised by the opponent.
I would therefore conclude that a request under R 139 filed in opposition, but relating to documents filed in examination, is only admissible if the amendment is in reply to a ground of opposition.
For the application of R 139 to documents filed originally or during examination, the grant of a patent represents a cut-off point. Documents filed during opposition can be corrected under Art 123(2)/R 89, under the same proviso, as R 139 and R 80 apply separately.
In this respect, it can also be said, like in G 1/10, that when accepting grant, the applicant/proprietor accepted the text in which the patent was granted. If he has overlooked a manifest error in the documents leading to grant, he cannot apply for a correction under R 139 during opposition and ignore at the same time the provisions of R 80.
The same applies mutatis mutandis in case of a request for limitation under Art 105a-c. A correction under R 139 appears only to be admissible if it represents a true limitation.
The limitation procedure is like the opposition procedure not a further opportunity to continue examination in order to merely amend the originally filed documents. Here as well, the grant of the patent represents a cut-off point.