EPO: Applicant is responsible for checking patent text

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

EPO: Applicant is responsible for checking patent text

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.

farrington.jpg

Jakob Pade Frederiksen


Inspicos P/SKogle Allé 2DK-2970 HoersholmCopenhagen, DenmarkTel: +45 7070 2422Fax: +45 7070 2423info@inspicos.comwww.inspicos.com

more from across site and ros bottom lb

More from across our site

Lawyers at A&O Shearman discuss six clauses typically found in brand licenses and identify the main points to consider
Deborah Kirk will head up Skadden’s IP and technology transactions team
The firm, which recently added high-profile IP lawyer Joel Smith to its cross-disciplinary practice, wants to respond to clients’ shifting demands
Counsel in Germany, Brazil, and Colombia explain what a US ruling on anti-suit injunctions in a FRAND case means for their advice to clients
Data outlining practitioners’ hopes for the UPC plus news of two major patent licence agreements were among the biggest IP developments this week
Kit Crumbley reveals his plans at Bracewell now that he can officially represent clients at the PTAB
Counsel at five law firms explain some of the trends affecting their businesses, such as difficulties holding onto young talent
A judge left baffled by a Federal Circuit ruling concerning claim construction recused himself from reviewing the patent dispute
Mr Justice James Mellor said the problem of forum shopping in FRAND cases is likely to multiply given the launch of the UPC
Law firms should act now to highlight their credentials for the next research and awards cycle
Gift this article