CABINET CHAILLOT
PATENTS TRADEMARKS DESIGNS
French Patent & Trademark Attorneys - European Patent Attorneys - Representatives before EUIPO
ISO 9001 CERTIFIED
The appellant's (applicant's) appeal lies from the examining division's decision refusing European patent application No. 17 196 706.0. The examining division found that the introduction into the application as filed of page 7 of the parent application could not be considered a correction within the meaning of Rule 139 EPC and therefore infringed Article 123(2) EPC.
The appellant argued that in view of the page numbering of the application as filed, it was immediately evident that a page was missing between pages 6 and 8. The introduction of page 7 of the parent application should be allowed since it was the evident correction of an obvious error.
Under Rule 139 EPC, "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 the 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".
It must be established (i) that it is obvious that an error is in fact present in the document filed with the EPO and (ii) that the correction of the error is obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction.
In the case at hand, the board accepts, in line with decision T 1931/13, that the gap between pages 6 and 8 shows that an error occurred in the filing of the application.
The board is, however, not convinced that what had been intended by the applicant is immediately evident. The scope of protection envisaged by the appellant - and a possibly adapted description - cannot be derived from the claims since no claims were filed with the application. The skilled person reading the application as filed would notice that some materials in Tables 2, 3 and 4 are not further specified in the application. However, the skilled person would not know whether these materials are relevant for the invention meaning that their specification was forgotten or whether they are not relevant for the invention meaning that their specification might not be needed.
The appellant's argument is based on the skilled person immediately realising that information was missing in the description to these tables. Even if the board accepted this argument, what the exact missing part was would still be questionable. Therefore, it cannot be accepted that it would be immediately evident that the whole of page 7 of the parent application was omitted by error. If there is any doubt that nothing else would have been intended than what is offered as the correction, a correction cannot be made (G 03/89).
The appellant also argued that the skilled person would consider the compound with the designation "E-04", cited on the page to be inserted, to be a kind of reference and that they would use this reference in a specific search with quotes. This would inevitably lead them to the parent application, in which they would identify page 7 and add it to the application as filed. The board does not concur with the appellant that the material indicated in the application could be used as a reference as in G 11/91, in which the reference was a reference to a document; not to one material among others.
Furthermore, even if the skilled person did a search for E-04, there is no reason why they would specifically use the term "E-04 membrane electrolytic cell" in quotes as a search term in Google. Using an equally likely "E-04 NaSICON material" as the search term without quotes gives a very high number of hits, while the same expression with quotes gives no hits. So there is no one-way street to the result.
But even if it was again accepted that the skilled person would perform such a search, there is no reason to assume that the missing page would be introduced in the description without any change. As indicated above under , it would be just as reasonable to assume that the intention was to amend page 7 and that the amended page was simply forgotten.
To conclude, the appellant's arguments are completely based on hindsight; starting from the result and trying to justify why it would have been evident to arrive at that result.
The appellant's argument that their evidence should be judged on the basis of the balance of probabilities cannot be accepted since the wording of Rule 139 EPC requires the correction to be "immediately evident", pointing to a high degree of certainty. As indicated above, several corrections could be argued as probable. However, Rule 139 EPC requires that it is immediately evident that there is only one option for correcting the error. This degree of certainty does not lead to a rule without purpose since numerous cases exist where a correction was accepted.
To conclude, the board is not convinced that the inclusion of page 7 is an immediately evident correction of an error. The requirements of Rule 139 EPC are not fulfilled.
Since page 7 does not find a basis in the application as filed, the requirements of Article 123(2) EPC are not fulfilled, and the main request is not allowable.
The appeal is dismissed.