J 0021/85 (Exchange of invention) of 29.1.1986

Summary of Facts and Submissions

I. The appellant filed two first applications with the German Patent Office on the same day, 3 February 1984. German patent application P 34 03 669.5 relates to a container designed particularly for the disposal of cans, characterised in that a compacting chamber is arranged behind the aperture through which the cans are put into the container. The applicant's representative gave this application the identification "Can precompaction". German patent application P 34 03 824.8 relates to a similar container characterised in the particular arrangement within it of a partition wall; it was identified by the word "Partition".

II. On 1 February 1985 the appellant's representative filed in his name European patent application No. 85 101 028.0 claiming the priority of German patent application P 34 03 824.8. The attached application documents are identical to those of the first "Partition" application.

III. In a letter dated 7 February 1985 and received on 8 February 1985 the appellant's representative requested that by way of a correction under Rule 88 EPC the documents enclosed with the letter and relating to the first application, "Can precompaction", be exchanged for the "Partition" documents subsequently filed as a European application on 1 February 1985. He also asked that the application be given the priority of the German first application P 34 03 669.5 "Can precompaction". It was demonstrated by means of several formal declarations and photocopies of internal documents from the representative's office that the wrong identification had been marked on the file covers of the two German first applications. In the absence of the representative familiar with the case the client's instruction to file a European patent application for the "Can precompaction" invention had resulted in an application being filed with the EPO on the basis of the "Partition" documents.

IV. In a decision dated 15 July 1985 the Receiving Section of the European Patent Office refused the request, essentially on the following grounds. Rule 88 EPC did not apply because the request for grant of a European patent was in conformity with the application documents. The correction requested did not therefore meet the requirement that it be immediately evident that nothing else would have been intended than what is offered as the correction. Exchanging the application documents was also contrary to Article 123(2) EPC.

V. The applicant's representative filed an appeal against this decision on 23 August 1985, at the same time paying the fee. In the grounds submitted on 24 September 1985 and during oral proceedings on 29 January 1986 he argued approximately as follows: What was involved was not so much a correction under Rule 88, second sentence, as under the first sentence. Decision J 08/80 of the Legal Board of Appeal (OJ 9/1980, pp. 293 and 296) laid down that for the purposes of Rule 88 EPC a mistake may be said to exist if the document does not express the true intention of the person on whose behalf it was filed. In this case the mistake consisted in using the documents of the wrong German first application, i.e. of "Partition" instead of "Can precompaction". The fact that the description, claims and drawings for the wrong invention had been attached to a request for grant of a patent could also constitute a mistake within the meaning of Rule 88, first sentence. Correction of the documents would then consist in attaching the correct documents, hence in this case in exchanging the description, claims and drawings relating to "Can precompaction" for those relating to "Partition". It was particularly important that although the request for correction involved substituting the documents relating to another application, the latter was another first application which had not undergone amendment. The purpose of the correction therefore was not to amend or extend the content of documents, but rather to comply with what was demonstrably the applicant's real intention; since this had been proven beyond doubt there was no question of an abuse of the right of correction under Rule 88. The request for correction was not contrary to any principles of patent law. The fact that it had been made promptly, and well before the European patent application was published, had prevented the public from being falsely informed. Nor was there any question of the filing of an application for a further development of the "Can precompaction" invention vis-à-vis the German first application. Consequently, Article 123(2) EPC did not present any obstacle to correction either. Moreover a correction was different from an inadvertent failure to file an application. In this case an application had actually been filed with the EPO. In the alternative the representative requested a correction under Rule 88, second sentence, EPC. The requirement here that what is actually intended be immediately evident equated with the obviousness of what had been shown to be the applicant's intention, namely to file an application not in respect of the "Partition" invention but in respect of the "Can precompaction" one, with no changes whatever vis-à-vis the first application already filed with the German Patent Office.

VI. The appellant requests

(1) that the contested decision be set aside;

(2) that the request for correction dated 7 February 1985 be allowed.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rule 64 EPC and is therefore admissible.

2. The Board of Appeal is aware that allowing the correction requested would raise fundamental points of patent law. These, however, need not be examined since on reflection the correction is clearly not admissible under Rule 88 EPC.

3. The latter expressly rules out such a correction. Rule 88, first sentence, states that "... mistakes in any document filed may be corrected". The French text is even more explicit, rendering the German and English "in" more precisely as "contenues dans toute pièce", i.e. "contained in any document". Subject, therefore, to certain conditions which do not need to be discussed here, Rule 88 allows certain aspects of filed documents to be made good, but not the attaching of another invention - set out in a description, claims and drawings - to a request for grant of a patent that has already been filed. The request for grant within the meaning of Article 78(1)(a) and Rule 26 EPC is not some sort of wrapper whose contents can be exchanged without annulling the request itself. As Rule 26(2) EPC shows, the request for grant is by its very nature a request for grant of a European patent for a specific invention. To exchange the whole subject-matter of the invention described for another is no more nor less than to withdraw one request for grant and re-file another. The request now that a European patent be granted for other subject-matter cannot therefore be attributed the original date of filing.

ORDER

For these reasons, it is decided that:

The appeal is dismissed.