G 1/10

G 1/10
Enlarged Board of Appeal of the European Patent Office
Issued 23 July 2012
Board composition
Chairman: Wim Van der Eijk Members: C. Rennie-Smith, B. Günzel, A. G. Klein, R. Menapace, U. Oswald, G. Weiss
Headword
Request to correct patent/FISHER-ROSEMOUNT

G 1/10 is a decision issued on 23 July 2012 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that Rule 140 EPC cannot be used to request corrections of the text of a European patent.[1]

Overview

The referral lies from interlocutory decision T 1145/09[2] by Technical Board of Appeal 3.5.03, who referred two questions to the Enlarged Board.

The first question was:

Is a patent proprietor's request for correction of the grant decision under Rule 140 EPC which was filed after the initiation of opposition proceedings admissible? In particular, should the absence of a time limit in Rule 140 EPC be interpreted such that a correction under Rule 140 EPC of errors in decisions can be made at any time?

The second question was:

If such a request is considered to be admissible, does the examining division have to decide on this request in ex parte proceedings in a binding manner so that the opposition division is precluded from examining whether the correction decision amounts to an unallowable amendment of the granted patent?

In its answer to the first question, the Enlarged Board of Appeal ruled that "since Rule 140 EPC is not available to correct the text of a patent, a patent proprietor's request for such a correction is inadmissible whenever made, including after the initiation of opposition proceedings." In its answer to the second question, it ruled that "in view of the answer to the first referred question, the second referred question requires no answer."

See also

• Amendments under the European Patent Convention

References

1. Teschemacher, Rudolf (1 February 2013). ""Request to correct patent/FISHER-ROSEMOUNT"". International Review of Intellectual Property and Competition Law. 44 (1): 96–97. doi:10.1007/s40319-012-0019-9. ISSN 2195-0237. S2CID 189823685.
2. Decision T 1145/09 (Stay of proceedings/FISHER-ROSEMOUNT) of 17 June 2010

Further reading

• Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (10th edition, July 2022), ii.e.4.5 : "Correction of errors in the description, claims and drawings after grant, and in opposition proceedings"
• Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (10th edition, July 2022), iii.l.2 : "Scope of Rule 140 EPC"
• Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (10th edition, July 2022), iii.l.2.1 : "Correction of the text of a patent"
• Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (10th edition, July 2022), iii.l.4.1 : "Correction requests as opposed to appeals"
• Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (10th edition, July 2022), iv.b.3.2.3.b : "Decisions with no text submitted or agreed by the applicant (Article 113(2) EPC) - deemed approval under Rule 70(5) EPC"
• Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (10th edition, July 2022), iv.b.3.6 : "Amendments after the decision to grant"
• Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (10th edition, July 2022), iv.c.5.1.1 : "Admissibility of amendments - principles"
• Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (10th edition, July 2022), iv.c.5.1.8 : "Admissibility of amendments - removal of error (in claim) in opposition proceedings Rule 139 EPC"

External links

• Decision G 1/10, Official Journal EPO 4/2013, 194 (ECLI:EP:BA:2012:G000110.20120723)
• Decision T 1145/09 (Stay of proceedings/FISHER-ROSEMOUNT) of 17 June 2010 (referring decision)