The application relates to an alkali metal super ionic conducting ceramic and is a divisional application of EP 10792537/EP 2 445 846.
Brief outline of the case
The application was refused by the ED and the applicant appealed this decision.
The ED found that the introduction into the application as filed of page 7 of the parent application could not be considered a correction within the meaning of R 139 and therefore infringed Art 123(2).
The board confirmed the decision and the application was refused for good.
The applicant’s position
The applicant argued that in view of the page numbering of the application as filed, it was immediately evident that a page was missing between pages 6 and 8. The introduction of page 7 of the parent application should be allowed since it was the evident correction of an obvious error.
Paragraphs  to  of page 7 showed numerous chemical formulae that did not provide any flexibility for change. This situation was different to case T 1931/13, where the then missing page 5 provided many possibilities of amendment. The currently missing page 7 could have been easily retrieved by a search, and T 341/04 and T 737/90 were relevant.
The applicant argued further that the evidence should be judged on the basis of the balance of probabilities.
The board’s position
The board accepted, in line with decision T 1931/13 that the gap between pages 6 and 8 shows that an error occurred in the filing of the application.
The board was, however, not convinced that what had been intended by the applicant is immediately evident. The scope of protection envisaged by the appellant – and a possibly adapted description – cannot be derived from the claims since no claims were filed with the application.
The skilled person reading the application as filed would notice that some materials in Tables 2, 3 and 4 are not further specified in the application. However, the skilled person would not know whether these materials are relevant for the invention meaning that their specification was forgotten or whether they are not relevant for the invention meaning that their specification might not be needed.
Even if the skilled person would immediately realise that information was missing in the description to these tables, the exact missing part was would still be questionable.
Since it is accepted that page 7 is missing, the skilled person would probably recognise that Table 1 is incomplete. It may be true that the skilled person would also accept that within each of paragraphs  to  of the parent application there is no reason for change.
However, it is not immediately evident that the applicant did not intend to delete one (or more) of these paragraphs. Furthermore, changes in paragraph  would also not be excluded by the skilled person, including, for example, the deletion of the last sentence of that paragraph. Therefore, it cannot be accepted that it would be immediately evident that the whole of page 7 of the parent application was omitted by error. If there is any doubt that nothing else would have been intended than what is offered as the correction, a correction cannot be made, cf. G 03/89, Reasons 6.
The board concluded that the applicant’s arguments were completely based on hindsight; starting from the result and trying to justify why it would have been evident to arrive at that result.
The arguments based on T 341/04 and T 737/90 were irrelevant for the current case since neither case dealt with a correction under R 139 and the “immediately evident” requirement. Instead, they concerned the retrieval of a document based on the information available in the description. This means that it was known what was missing, unlike in the case at hand. In the current case, the question was not whether a certain defined content could be retrieved but rather what the content was meant to be.
Since the wording of R 139 requires the correction to be “immediately evident“, pointing to a high degree of certainty, the notion of balance of probabilities was not applicable.
It is not the first time that R 139 is invoked for amending filed documents, cf. J 16/13 in which a mismatch within the documents filed was manifest.
R 139 has also be invoked when attempting to disguise an amendment in appeal, cf. T 2990/18, Reasons 5.3.1. It has also been invoked in an attempt to save the claimed priority, cf. T 924/15, Reasons 4.5 or T 1296/14, Reasons 1.1 ff.
G 1/12 might have somehow eased certain corrections, but there again, within a very tight tome frame and rather strict premises.
R 139 does not appear applicable when there are specific legal remedies. In case of missing documents at filing, R 56 is applicable, but the correction has to be requested within two months from filing or two months from an invitation by the EPO. Past this two months, a correction is not any longer possible.
In order to avoid missing a page when filing a divisional, it appears best to file by reference to the description of the parent, cf. Guidelines A-II, 18.104.22.168. Filing the same claims as in the parent is not helpful as it delays a meaningful search.