T 0726/93 (Textile machines) of 1.7.1994

Summary of Facts and Submissions

I. On 19 August 1989 the appellants filed a request for the grant of a European patent for a "heating method in textile machines", claiming priority of 29 August 1988 from Swiss patent application No. CH-03 204/88-4.

II. The list of documents accompanying this request (EPO Form 1001.1 to 1001.5) included the following:

description: 3 copies, 9 sheets

claims: 3 copies, 3 sheets

drawings: 3 copies, 2 sheets, total number of figures: 3

abstract: 3 copies, 1 sheet

priority document: 1 copy.

III. In the accompanying designation of the inventor, the title of the invention was given as "Heating method in textile machines". Moreover, the "Standard Search Report" dated 20 December 1988, which had been drawn up for Swiss patent application No. 03 204/88-4 and also accompanied the request, referred to two documents concerning this invention.

IV. The accompanying priority document was the above-mentioned Swiss patent application No. 03 204/88-4 for a "heating method in textile machines".

V. The description, claims and abstract, however, referred to "a drawing frame for a flyerless spinning method". The description contained eight sheets and the claims two sheets. The drawings (2 sheets, 3 figures) corresponded not to the description but to the drawings in the priority document.

VI. In a submission dated 7 December 1989, the appellants requested a correction under Rule 88 EPC whereby the description, claims and abstract as filed would be replaced with a text which agreed exactly with the priority document.

VII. The Receiving Section informed the appellants that a decision on their request for correction would not be issued until the application was examined by the examining division. For the publication of the application and for the search, the Receiving Section used the documents as originally filed. On the title page of the publication, reference was made to the request pursuant to Rule 88.

VIII. The appellants' request for correction and the patent application were both rejected in a decision dated 11 December 1992 and posted on 12 March 1993. The decision was arrived at essentially on the grounds that an omission such as that of an entire document was not a correctable mistake within the meaning of Rule 88 EPC. This interpretation was also said to be in keeping with the interests of third parties. Moreover, a correction under Rule 88 EPC ought not to entail the complete replacement of the invention by another.

IX. The appellants lodged an appeal against this decision, paying the appropriate fees. In the grounds for their appeal they argued essentially as follows:

Rule 88 EPC laid down that mistakes in the documents filed might be corrected. This type of mistake could, as in the present case, involve the filing of a description and claims which were evidently not in keeping with the applicant's intentions. Nevertheless, a description and claims in keeping with the applicant's intentions did exist. These were contained in the priority document.

X. The appellants requested that:

1. the contested decision be set aside and a correction pursuant to Rule 88 EPC be granted such that the description and claims contained in the priority document be regarded as the definitive ones for the present application,

2. in the alternative, the priority document filed with the application should be regarded as a European application.

Reasons for the Decision

Rule 88 EPC lays down the following: "Linguistic errors, errors of transcription and mistakes in any document filed with the European Patent Office may be corrected on request. However, if the request for such correction concerns a description, claims or drawings, the correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction."

2. It is accepted in the present case that there is a mistake in the documents filed. The examining division's interpretation to the effect that Rule 88 EPC allows only the correction of errors in a document and not the replacement of an entire document is not supported by the EPC. Rule 88 EPC lays down as a general principle that mistakes in documents filed with the Patent Office may be corrected. Whether the mistakes affect only part of a document or the document as a whole is of no importance.

3. As the mistake is immediately evident, all that remains is to decide if it was also immediately evident that the appellant could only have intended to file a description and claims in keeping with the description and claims contained in the priority document.

4. In opinion G 3/89 (OJ EPO 1993, 117) the Enlarged Board of Appeal gave the following interpretation of Rule 88 EPC:

"The parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) may be corrected under Rule 88, second sentence, EPC only within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed. Such a correction is of a strictly declaratory nature and thus does not infringe the prohibition of extension under Article 123(2) EPC."

5. In point 7 of the reasons for this opinion it was held that: "As a result of the prohibition of extension under Article 123(2) EPC, documents other than the description, claims and drawings may be used insofar as they are sufficient for proving the common general knowledge on the date of filing. On the other hand, documents not meeting this condition may not be used for a correction under Rule 88, second sentence, EPC even if they were filed together with the European patent application. These include, inter alia, priority documents, the abstract and the like."

6. This opinion is thus to be understood as meaning that a skilled person should be able to establish immediately on the basis of the content of these documents as a whole and, if necessary, with the help of his specialist knowledge, that a mistake in the description, drawings or claims accompanying a patent application has been corrected. Only in cases like these might this type of correction be allowed without infringing Article 123(2) EPC. Any other documents, including the priority document, which do not form part of the patent application may not be used to justify the correction offered.

7. The present case, however, does not involve the correction of a technical feature in the description, drawings or claims but the complete replacement of the description and claims as filed. In this type of case it is obviously unnecessary to interpret the content of the patent application and pointless to consult the average skilled person. The present case thus concerns a situation which is different from the one dealt with in the opinion of the Enlarged Board of Appeal. Therefore the interpretation of the Convention given in that opinion does not apply here.

8. The present situation can in reality be compared to a case where the designation of a contracting state is omitted erroneously and where such an omission may be corrected in accordance with the established case law of the Legal Board of Appeal (J 4/80, OJ EPO 1980, 351; J 8/80, OJ EPO 1980, 293; J 12/80, OJ EPO 1981, 143; J 3/81, OJ EPO 1982, 100; etc.), even if the error is not obvious. This, however, requires a heavy burden of proof. Such a correction cannot contravene Article 123(2) EPC because it does not represent an amendment of the technical content of the application but rather restores the whole application to its original state as always intended by the applicant.

9. Where elements of the patent application relating to the disclosure (ie the description, the set of claims and the set of drawings) and obviously not in keeping with the request for the grant of a patent have been erroneously filed, it is all the more essential to be able without infringing Article 123(2) EPC to correct such a mistake by replacing those erroneously filed elements with the elements actually intended when the request for the grant of a patent was submitted, if it is immediately evident on the date of filing that a mistake exists, what the mistake is and conclusive proof is available of what the applicant actually intended to file.

10. The board is convinced that if all the documents in the present case are considered, it is immediately evident that nothing else would have been intended than what is offered as the correction. In other words, it is satisfied that the appellants obviously wished to file a patent application in keeping with Swiss patent application No. 03 204/88-4 whose priority was claimed. This can be deduced without any doubt from the request for the grant of a European patent. As stated in points II to IV above, all the information in the request (such as title, request for priority and number of pages) and also the designation of the inventor, the standard search report and the priority document filed at the same time, concern the same subject-matter, ie the invention in accordance with Swiss patent application No. 03 204/88-4. This being the case, the decisive factor in proving the appellants' intentions was the fact that the priority document filed with the application agreed with the other information in the request.

11. The appellants' request for correction is therefore to be granted.

ORDER

For these reasons it is decided that:

1. The contested decision is set aside.

2. The case is remitted to the examining division for further prosecution of the patent application on the basis of the description and claims filed on 18 December 1989 which are in keeping with the description and claims in the priority document.