When the European Patent Office (EPO) decides to grant a European patent, it issues a text for grant (known as the Druckexemplar) and a communication requiring a response, in which the applicant must file translations of the claims into the other two official EPO languages, pay the fees for grant and approve the text for grant. Only when the response is filed, the application is put through to grant.
A recent decision by the Technical Board of Appeal confirms that this stage in the process is certainly more than a formality. Whilst the filing of translations into the other two of the EPO’s official languages and the payment of the fees for grant are relatively formalistic, the approval of the text for grant does have its dangers — particularly if something is missed.
The decision (T 1785/15) relates to a European patent application for which the above communication was issued. As is often the case in these communications, the examiner proposed some amendments to the description and claims for the applicant’s approval. The applicant then proceeded to pay the fee for grant and file the required translations of the claims. The applicant did not explicitly approve the text for grant — which is taken by the EPO to be an approval of the text for grant, since the applicant’s response was absent.
The patent application was then put forward for grant and a communication confirming the grant of a European patent was issued to the applicant on 2 July 2015 with formal grant (then) anticipated to take place on 29 July 2015.
On 21 July 2015, the applicant requested that the grant was delayed, as obvious errors were spotted in the claims. This request was rejected. The applicant was advised, by the EPO, that it could file an appeal against the decision to grant. The applicant proceeded to file an appeal against the decision to grant and requested amendment of the claims to correct the errors.
Unfortunately, the appeal was deemed inadmissible as the applicant could not have been said to be ‘adversely affected’ by the decision to grant. The reasons given are that the applicant did not say anything about the text for grant when they filed the translations of the claims and paid the fees for grant. This was taken to be an unreserved approval of the text for grant. It is a requirement for an admissible appeal that the party filing the appeal is adversely affected by the decision.
As the appeal could not proceed, the amendments to the claims to correct the obvious errors could not be filed and the application proceeded to grant without the amendments having been made. That said, the appeal fee was reimbursed as the appeal seemed to have been filed based on incorrect advice from the EPO.
Although it could only be said to be equitable for the appeal fee to be reimbursed, particularly since the appeal seemed to have been filed based on incorrect advice from the EPO, this case illustrates the importance of making sure the text for grant is correct before approving it.
With the Unified Patents Court (UPC) on the horizon and the law before the UPC still shrouded in uncertainty, making sure the text for grant is correct is absolutely imperative and cannot be regarded as a formality.
This is because when the UPC is in effect, the opportunity will exist to pursue a single patent across the 25 participating member states and this will expose the patent to a centralised attack on its validity — without the security of a nine month opposition period. Any errors in the claims of such a patent could be used to set up an attack on the validity of those claims — particularly on the basis of a lack of sufficient disclosure or a lack of support. It is therefore of vital importance that these errors are ironed out when the opportunity is provided to mitigate against the possibility that these errors can be used to attack the granted patent.
Even in states which are not UPC participating states, the possibility of a post-grant amendment to the claims may exist, but it is often the case that such an amendment cannot broaden the claim. Therefore, if the proposed correction would broaden the claim it would not be allowable. If the amendment is requested as a correction of an obvious error, the burden of proof for allowing such a correction is often quite high, which presents its own problems.
That is to say, the text for grant is the last chance for a European patent to be checked over by the applicant before it is open to the world and, most importantly, competitors to cast a careful eye over. It is possible that any errors in such a text could be used to cast doubt on the validity of the patent and addressing those errors can provide serious problems. These errors may be very difficult to address afterwards.
The onus is therefore on both patent attorneys and applicants alike to make sure the possibility of these errors occurring is minimised. The only way to achieve this is by thoroughly checking the text for grant whilst the opportunity exists to do so.
Indeed, it is still possible to miss things — we are all only human after all. In this instance, it may still be possible to address the error, although it is fraught with risk. The applicant could self-oppose the grant of the European patent using a ‘straw-man’ approach and attempt to force the amendment of the patent to correct the obvious errors. It is not permissible for the applicant to explicitly self-oppose its own patent. The adversarial nature of the opposition process means that the applicant and the ‘straw-man’ can essentially control the opposition — the EPO generally only adjudicates.
The risk, however, is firstly that the opposition procedure takes a long time. Secondly, the EPO is not legally restricted to the facts and evidence submitted by the applicant and the ‘straw-man’ — and could therefore introduce new issues which could present more serious problems. Thirdly, if the European patent has been asserted against a third party, that party could intervene in the opposition procedure — even if the intervention is filed outside of the nine month opposition period and introduce an unwelcome piece of prior art, which could see the patent revoked. Given these risks, the possibility of trying to correct through the opposition procedure in this ‘ad-hoc’ manner should only be considered as a last resort.
In short, it is best not to rely on any possibility of an ‘ad-hoc’ post grant amendment and check the European patent carefully to ensure that errors are not present. In this decision, the EPO Technical Board of Appeal could not have been clearer about the necessity to check the text for grant carefully before it is approved.