CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1558/22 – Amendment under Art 13(2) RPBA and correction of an error under R 139

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The patent relates to a method for controlling and/or monitoring a compressor system as well as a compressor system comprising one or more compressors.

Brief outline of the case

The opposition was rejected and the opponent appealed.

The board decided that claims 1, 13, 14 as granted lacked IS over D1=US 2007/0005805 +D4: US RE40,817 E. The same applied to AR 1-4

AR 4a was not admitted under Art 13(2) RPBA.

The patent was thus revoked.

The case is interesting in view of the reasons for not admitting AR4a.  

Filing of AR4a – The proprietor’s point of view

After the board had expressed its opinion on the IS of the independent method claims 13 and 14 or 12 and 13 of auxiliary requests 1 – 4 at the OP, the proprietor filed an AR 4a to correct an obvious error in claims 12 and 13 of AR 4.

The proprietor argued that the error was manifest as well as its correction and had been overlooked by the board in its communication under Art 15(1) RPBA, or at least failed to draw attention to it.

The proprietor considered this as an exceptional circumstances justifying the late filing within the meaning of Art 13(2) RPBA,

The board had mentioned the error for the first time during the OP, so that the proprietor should be given the right to react appropriately. This merely consisted of the cancellation of method claims 12 and 13 of AR 4, which contained the manifest  error.

The board’s decision

On the correction under R 139

The board acknowledged that under R 139, a manifest error can be corrected if it is immediately apparent what the correction should be.

However, the board considered that the error was not at all manifest and hence the conditions for a correction under R 139 were not given. 

The board also held that it was not obvious for these independent method claims of AR 2-4 that the proprietor intended to completely adapt their wording to the respective amendments made in claim 1.

If this had been the case, a correction corresponding to the error would probably have consisted in supplementing claims 12 and 13 of AR 4 with the allegedly inadvertently omitted features in order to achieve the intended complete adaptation to the amended wording of claim 1, not in a deletion of claims 12 and 13 as in the corrected version of AR 4a.

The correction under R 139 was thus not allowable.

On the admissibility of AR4a

The board noted that the proprietor could not be surprised by the board’s opinion at the OP on the lack of IS of claims 12 and 13 according to AR 4 and was thus not confronted with new facts or arguments.

Even if the proprietor subjectively assumed that claims 12 and 13 of AR 4 contained the limiting features with respect to the domain-specific R&I schemes, it is incumbent on the proprietor, as part of its procedural duty of care, to review its own requests before the OP and correct them if necessary.

The board did not consider itself obliged to revisit in its decision all the reasons once set out for a higher-ranking request if they could obviously also lead to the failure of a lower-ranking request.

In this case, the appellant does not enjoy any protection of legitimate expectations due to a kind of “unrepentant admission” by the board, i.e. in the sense that the appellant may assume that objections not mentioned again would not continue to apply unchanged in lower-ranking auxiliary requests despite the same facts.

There is no exceptional circumstance outside the proprietor’s sphere of responsibility that would justify the late submission of AR 4a as a correction of AR 4.

Therefore, it is also not relevant whether further criteria for the exercise of discretion defined in Art 12(4), 13(1) RPBA, which may be taken into account in addition to the strict requirements of Art 13(2) RPBA, are fulfilled, such as the lack of complexity of the amendment consisting of a deletion of independent claims or the obvious suitability of this amendment to overcome objections to the deleted claims.

Hence AR 4a was not admitted in the procedure.


On the correction of an error under R 139

The board simply reminded the conditions under which a correction under R 139 may be allowable:

When the error is in the description, the claims or the drawings, not only it should be immediately apparent that an error has occurred, but also what the correction should be, within the limit of what has been originally disclosed, supplemented by the general knowledge of the person skilled in the art.

In the present case, the board found that the first condition was not fulfilled.

On the admissibility of AR4a

The board made it clear that it is incumbent on the proprietor, as part of its procedural duty of care, to review its own requests before the OP and correct them if necessary.

If it is obvious that reasons applying to a higher ranking request also apply to lower ranking ones, there is no protection of legitimate expectations.

An interesting message which might be gained from the present case is that an error under R 139 cannot be corrected by merely deleting the claims containing said error. A proper correction has to be carried out.

It was a good attempt for the proprietor to avoid the immediate refusal after AR4 was deemed not inventive, but carrying out an amendment during OP before a board is in general doomed to fail under Art 13(2) RPBA.

On the procedure

CPA=D1=US 2007/0005805 was not mentioned in the ISR established by the EPO. The document on which the priority for D1 was claimed was cited in the application/patent. D1 could thus have been retrieved.

D4=US RE40,817 E was also not mentioned in the ISR established by the EPO.

The patent should thus not have been granted in the first place.

The present decision of the OD is one of the numerous decisions set aside by a board in the recent years.

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