G 0003/89 - Standard of "direct and unambiguous disclosure" - #28

Citation rank: 28
No. of citations: 130

G 3/89 was one of two G-decisions (the other one was G 11/91) which looked at the conditions under which "obvious errors" can be corrected under Rule 88, second sentence EPC1973 (now Rule 139, second sentence). The impact of the decisions goes far beyond the issue of corrections of obvious errors, because the standard regarding disclosure, which was set by G 3/89 and G 11/91, is more or less universally applied under the EPC, e.g., also for assessing the disclosure of a prior art document (when assessing novelty), in an application as-filed (for the purposes of Art. 123(2)) and in a priority application (for assessing the validity of a priority claim).

In G 3/89 the President of the EPO referred questions to the Enlarged Board of Appeals, because he felt that two decisions of the Boards of Appeal, namely T 401/88 and J 4/85 represented diverging case law in the sense of Art. 112(1)(b), which justified referral to the Enlarged Board of Appeals.

T 401/88 held that a requested amendment which represents an inadmissible extension within the meaning of Article 123(2) EPC, and which cannot be allowed, may also not be allowed as a correction under Rule 88, second sentence, EPC. J 4/85 applied a less strict standard and ruled that for assessing the allowability of a correction under Rule 88 EPC1973 it is necessary to take account of all the facts and evidence enabling the applicant's intention to be established. In particular, the priority document could be taken into account to establish what the intention of the applicant was, even if it was not filed with the European patent application.

The Enlarged Board considered that a correction of an obvious error under Rule 88 EPC1973 was a special case of amendment, hence, the prohibition of extending the subject matter of Art. 123(2) applied. As a result, an amendment of the application through correction of an obvious error must not add anything which was not part if the content of the application as filed. They stated:

"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."

Regarding potential infringement of Art. 123(2) by corrections of obvious errors, the Enlarged Board stated:

"4. 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. Under these circumstances, there cannot be said to be any retroactive effect. 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."

The standard of "direct and unambiguous disclosure" has since then been applied whenever the content of a document had to be assessed, e.g., in the context of novelty, validity of a priority claim or amendments.  

G 3/89 and G 11/91 may be seen as being the reason as to why the EPO has adopted its relatively strict amendment policy.

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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.

The full text of the decision can be found here.