Pursuant to Rule 71(3) of the European Patent Convention (EPC), towards the termination of the examination proceedings, the Examining Division of the European Patent Office (EPO) shall inform the applicant of the text in which it intends to grant the European patent. Following Rule 71(5) EPC, if the applicant subsequently pays the grant and publishing fees and files the required translations of the claims, he shall be deemed to have approved the text intended for grant.
In examination proceedings pertaining to EP 2 396 848, in the communication under Rule 71(3) EPC, the Examining Division made reference to the claims submitted by the applicant in the list of documents intended for grant. However, the EPO had left out parts of the claims from the text intended for grant itself. The applicant apparently overlooked the flaw and proceeded by complying with the provisions of Rule 71 EPC, and the patent was subsequently granted in a form from which parts of the claims were missing.
Following the issue of the printed patent, the B1 publication, the applicant requested correction under either one of Rules 139 or 140 EPC, correction of a purported printing error, or that the decision to grant the patent be considered null and void. Neither the Examining Division nor the Board of Appeal allowed either of these requests. In its decision T 506/16, the Board of Appeal notes that:
- Rule 140 EPC is not available for correcting patents in accordance with Enlarged Board of Appeal decision G 1/10.
- Rule 139 EPC is only applicable to documents filed with the EPO, i.e. not to documents produced by the EPO.
- The obligation to check the text in which the patent will be granted lies with the applicant.
- The decision to grant did not infringe the principle of good faith and the protection of the legitimate expectations of the users of the EPO.
The applicant’s attempt to reinstate the missing parts of the claims did not thus succeed, despite the fact that it was the EPO’s Examining Division that included an incomplete set of claims in the text intended for grant.