J 0012/80 (Correction of mistakes) of 26.3.1981

Summary of Facts and Submissions

I. On 29 August 1979, the appellant filed a European patent application designating seven Contracting States of the European Patent Convention and one non-Contracting State, Spain. Designation fees for eight States were paid on the same day. The application claimed priority from a German national application made on 6 September 1978.

II. Two days later, on 31 August 1979, the appellant sent a telex message to the European Patent Office, duly confirmed by letter, requesting correction of an error in the request for grant form by replacement of the designation of Spain by that of Switzerland, a Contracting State.

III. On 20 September 1979, the appellant wrote again to the Office, giving reasons why, in the appellant's opinion, the correction requested should be allowed and enclosing a statement, entitled "eidesstattliche Erklärung", by a secretary employed in the Patent Department of the appellant, together with relevant documents, showing that she had been instructed to include Switzerland in the request for grant form for the European patent and that a national application was to be made in Spain. It was alleged that the secretary had confused her written instructions.

IV. Those instructions included a typewritten programme for filing foreign applications dated 27 June 1979, which did not mention either Spain or Switzerland. A typewritten note dated 11 July 1979 shows, however, that as a result of discussion with the inventors, it was decided that a national application should be made in Spain and that Switzerland should be included among the States to be designated in the application for a European patent. The names of those States, with cross references to the note of 11 July 1979, were added, in red ink, to the programme dated 27 June 1979.

V. In her statement, the secretary says that she felt unwell at the time and she attributes her mistake to this factor. Photocopies of certificates are attached showing that she was absent from work, on medical grounds, from 6 August to 14 September 1979. From a further written statement dated 12 March 1981, filed in response to an enquiry by the Legal Board of Appeal, it appears that she prepared the documents making up the application shortly before her absence from work began and not, as her original statement indicated, on 27 August 1979.

VI. On 3 January 1980, the Receiving Section of the Office issued the Decision under appeal, rejecting the request for correction, on the ground that Article 79 EPC excludes designation of States after the date of application and that Rule 88 EPC could not be applied because, when the application was received, there was no indication, either express or necessarily to be implied, of a possible error.

VII. By letter dated 3 March 1980, the appellant gave notice of appeal against this Decision. The appellant asked that the Decision should be set aside and that Switzerland should be added to the designated Contracting States. The appeal fee was duly paid and a Statement of Grounds dated 29 April 1980 was duly filed.

VIII. In its Statement of Grounds, the appellant pointed out that the correction sought had been requested within the priority period under the Paris Convention. The appellant relied upon Article 125 EPC and contended that there were principles of procedural law generally recognised in the Contracting States which could be applied to the case in the appellant's favour. The appellant also argued that Rule 88 EPC could be applied and that the reason for not applying it given by the Receiving Section was wrong. The appellant submitted that there was a clear discrepancy between paying designation fees for eight States and naming seven Contracting States and one non-Contracting State.

IX. In a supplementary Statement the appellant reminded the Legal Board of Appeal of its decision in Case J 08/80, published in September 1980.

X. The application for a European patent was published on 11 June 1980. The States designated in the application as published did not include Spain or Switzerland.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rules 1 (1) and 64 EPC, and is, therefore, admissible.

2. The Legal Board of Appeal has previously decided, in Case No. J 08/80 on 18 July 1980 (Official Journal EPO 1980, page 293), that Rule 88 EPC does not exclude the correction of a mistake in designating States in a European patent application, even if the mistake is not obvious.

3. The Board shares the opinion of the appellant that there was a clear discrepancy in the appellant's application between the designation fees paid and the States designated. However, it cannot reasonably be said that the correction sought was self-evident. Allowability of the request for correction depends, therefore, on the view the Board takes of the statement and documents put forward by the appellant with its letter dated 20 September 1979.

4. From the documents put forward, it appears that it was not originally intended that patent protection would be sought for the invention in question either in Spain or for Switzerland. But the typewritten note dated 11 July 1979 shows that it was decided that a national application should also be made in Spain and that Switzerland should be added to the list of States to be designated in an application for a European patent.

5. So it is clear that, well before the application was filed, the appellant intended to designate Switzerland in the proposed European application. The failure to designate was due to confusion, and not to a change of intention. The nonsensical inclusion of Spain in the request for grant, coupled to payment of eight designation fees, is evidence of that.

6. The fact that there was a mistake, the nature of the mistake and the correction required are, therefore, clear. There is no obscurity or ambiguity in the evidence. All relevant facts appear to have been put before the Board.

7. In the first decided appeal case of this kind (J 08/80) it was observed that, because the request for correction had been made promptly, it was unnecessary to consider whether the right to obtain correction was subject to certain inherent time limitations. In the present case, there is no doubt that the application for correction was made promptly, within two days of filing of the application and before the expiry of the priority period.

8. As the application has been published without the designation of Switzerland, while this appeal was pending, there is an unavoidable risk that a third party may have started to use the invention in Switzerland, relying on the non-designation of that State. Thus, in this case, the question also arises of public interest in knowing with certainty what the legal position is. On the other hand, as the appellant had no control over the publication, it would not be right to refuse correction of the mistake, if the appellant is otherwise entitled to it, because of the intervening publication.

9. Rule 88 EPC does not contain any express provision protecting third parties such as is found in Article 122(6) EPC, to deal with comparable situations arising where restitution of rights is granted. In the absence of specific provisions in the European Patent Convention, the solution of any problem of third party rights must be left to the national Courts of competent jurisdiction.

10. For the reasons given above, the Board considers that, in this particular case, the request for correction may be allowed.

11. The Decision under appeal was based on an incorrect interpretation of Rule 88 EPC, and of the facts of the case, and must be set aside.

12. No application has been made for reimbursement of the appeal fee in accordance with Rule 67 EPC, and it is not considered that the circumstances of the case would have justified such an order.

ORDER

For these reasons, it is decided that:

1. The Decision of the Receiving Section of the European Patent Office dated 3 January 1980 is set aside.

2. It is ordered that the request for grant form filed on European patent application No. 79 103 186.7 is to be corrected by the addition thereto of the designation of Switzerland.