G 0011/91 - Correction of obvious errors ("Glu-Gln") - #54

Citation rank: 54
No. of citations: 87

G 11/91 is one of two G-decisions (the other one is G 3/89) which looked at the conditions under which "obvious errors" can be corrected under the EPC.

The possibility of correcting obvious errors is provided for by Rule 139 EPC (formerly R. 88 EPC1973), which reads:

R. 139 - 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. 

In the underlying appeal case, T 184/91, the applicant-appellant requested correction of an amino acid residue in a claimed amino acid sequence, from "Glu" (stands for glutamate) to read "Gln" (stands for glutamine). The Examining Division refused this request on the grounds that this corrected information could not be derived from the original application, but only from a laboratory report provided by a third party. That was considered contradictory to Article 123(2) EPC.

The Technical Board of Appeals asked the Enlarged Board whether correction under R. 88 EPC1973 (R. 139 EPC) was possible in cases where the correction would lead to added subject matter in the sense of Art. 123(2) EPC.

The Enlarged Board firstly stated that a correction under Rule 88 EPC1973 is an amendment of the application, and as such it must comply with Art. 123(2) EPC (point 1 of the reasons).

The strict standard set by the Enlarged Board of Appeals for allowing correction under Rule 88 EPC1973 was formulated as follows:

"The parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) may therefore be corrected under Rule 88, second sentence, EPC only within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge and seen objectively and relative to the date of filing, from the whole of these documents as filed." (point 3 of the reasons)

Regarding the question of extension of subject matter, the Enlarged Board stated:

"A correction under Rule 88, second sentence, EPC is of a strictly declaratory nature. The corrected information merely expresses what a skilled person, using common general knowledge, would already derive on the date of filing from the parts of a European patent application, seen as a whole, relating to the disclosure. This does not therefore affect the content of the European patent application as filed. [...] Since a correction admissible under Rule 88, second sentence, EPC is thus of a declaratory nature only, it does not infringe the prohibition of extension under Article 123(2) EPC either." (point 4 of the reasons)

According to the Enlarged Board, errors that concern disclosure (i.e., description, drawings and claims) can only be corrected, if they are "obvious" in the sense that (i) it is obvious that an error has occurred, and (ii) it is obvious that the requested correction is what was intended in the first place (points 5 and 6 of the reasons).

For the underlying appeal case T 184/91 this meant that the requested correction of "Glu" to "Gln" (on the basis of information contained in laboratory notebooks) was not possible.

Remark: The significance of G 11/91 and G 3/89 goes beyond the question of allowing corrections of obvious errors. The two decisions were the first to mention the concept of "direct and unambiguous disclosure", which was later applied to other legal questions, such as the right to priority (G 2/98), divisional applications (G 1/06), and the assessment of novelty (EPO Case Law Book I.C.4.1).

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Headnote:

1. The parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) may be corrected under Rule 88, second sentence, EPC only within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed. Such a correction is of a strictly declaratory nature and thus does not infringe the prohibition of extension under Article 123(2) EPC.
2. Evidence of what was common general knowledge on the date of filing may be furnished in connection with an admissible request for correction in any suitable form.