AR 1 to 4 and 6 to 8 were submitted with letter dated 07.11.2019 replacing AR 1 to 4 and 6 to 8 filed with the reply to the statement setting out the grounds for appeal of the opponent.
The proprietor put forward, in relation to these AR, that the filing was prompted by an obvious error by mistakenly including certain features in claim 3 of its previous AR 1 to 4 and 6 to 8 of 17 July 2019 and, therefore, limited to a mere correction of that error.
The presence of an obvious error was evident from the fact that the features removed (“and preferably the weight of the solid composition is from about 10 to about 26 g and the weight of the liquid composition is from about 0.5 to about 4 grams”) were not present in claim 3 of the granted patent.
The presence of an obvious error was also evident because these features were not addressed to in the letter of 17 July 2019, as it is particularly evident from the table at pages 3 and 4 thereof, making clear that it was not in the intention of the patent proprietor to change the subject-matter of claim 3 of these auxiliary requests.
The Board held that, following the principle that the proprietor always bears the responsibility of formulating its own requests, the mere fact that an amendment is not mentioned in the written submissions of this party cannot be seen as evidence proving that the amendment is the result of an obvious error, because it was not intentional.
This principle applies also to the table at pages 3 and 4 of the letter dated 17 July 2019, because the explanations and information given therein do not relate to claim 3 of AR 1 to 4 and 6 to 8, such that it is not possible to clearly conclude that any change made thereto was unintentional and done by mistake.
Removing the feature “and preferably the weight of the solid composition is from about 10 to about 26 g and the weight of the liquid composition is from about 0.5 to about 4 grams” is therefore considered by the Board as an amendment, and not as the correction of an obvious error, possible under the provision of Rule 139 EPC.
This is because the proprietor has not credibly established that it is obvious that an error is present in claim 3 of AR 1 to 4 and 6 to 8 filed with the reply to the statement setting out the grounds of appeal of the opponent, the incorrect information being objectively recognisable by the skilled person.
AR 1 to 4 and 6 to 8 were not admitted in the procedure pursuant Art 13(1) RPBA20.
The conclusion was bitter for the proprietor as claim 1 as granted and as maintained were infringing Art 76(1) and the patent was revoked.
Conclusion
An amendment to a party’s case under Art 13 RPBA20 cannot be disguised as the correction of an obvious error under R 139, if such an error is not prima facie apparent.
Art 113(2) was fatal to the proprietor.
https://www.epo.org/law-practice/case-law-appeals/recent/t182990eu1.html
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