By
Charlotte Teall —

Background

Rule
140 EPC does not explicitly relate to the correction of patents, but to the
correction of EPO decisions.  However, until
now, the European Patent Office (EPO) has allowed patentees to correct the text
of a Patent after grant using Rule 140 EPC.

Recent decision (G1/10)

The
Enlarged Board of Appeal at the EPO has decided that this practice must now stop.  Patentees can no longer use Rule 140 EPC to "tidy-up" errors in their
patents.

The
Board's main reason was that this practice can have a negative effect on third
parties, who rely on the text of the patent when it is granted.  For example, a
third party may decide not to file an opposition based on the granted
text, but may then be threatened by the
corrected patent and prevented from contesting the correction by filing an
opposition because the opposition period has expired.

The
Board said that preventing post-grant correction is not unfair for the patentee
because the patentee can correct errors in the patent before grant.  The
patentee is given the opportunity to check the text that the EPO intends to
grant and must approve that text before it can be granted.  If the patentee
fails to do this then the responsibility for the errors is his alone, and not
the fault of the EPO for granting the erroneous text.

In
any case, since the EPO should only allow a correction if it is an obvious
error, the patent should be read as if the error was not there.  Therefore, it will not matter if an actual
correction is made.

What this means

Patentees
can only change the text of a patent at the EPO by requesting amendment during
opposition or proceedings to limit the claims.  Amendments are subject to
different rules than corrections.  In particular, they can only be made in
response to an opposition ground or to bring the description.  As a result, it is less straightforward to get
an amendment allowed than a correction.

It
is even more important than before to carefully check the text that the EPO
intends to grant, and correct any errors before paying the grant fees or filing
claims translations.

A
granted European Patent is effectively a bundle of national patents that are
subject to national laws.  The laws on amendment and correction of patents after
grant vary in each country.  While a patentee may not be able to correct the
text of a patent at the EPO, such correction may still be possible in certain
designated states.

This article was reprinted with permission from Forresters.