The number of patents granted by the European Patent Office (EPO) has been increasing year-on-year – except for 2014, which saw a 3.1% decrease – with an average annual increase of 10.7% since 2010 (when figures started to be published).
Indeed, we have seen the same trend – but with even higher numbers than the EPO – with European patents represented by FRKelly having an average annual increase of 18.2% over the same period.
With more and more European applications proceeding to grant, it’s more important than ever to ensure the final stages of the grant procedure before the EPO is complete and accurate.
In the final stages of the grant procedure, the EPO will inform the applicant of the text intended for grant – which might include amendments/corrections made by the examining division on its own initiative – and request approval of the text by the applicant.
Once the applicant approves the text, any amendments/corrections will be only exceptionally admitted under the discretionary power of the examining division.
However, once a decision to grant is handed over to the EPO internal postal service for transmittal to the applicant, the examining division is no longer competent to decide on a request for amendment/correction. This means that, once the decision to grant is handed over to the EPO internal postal service, any requests for amendment/correction will not be admitted, and will simply be disregarded.
At this point, any correction of errors is extremely limited.
- Obvious mistakes in the bibliographic data (for example, the name/address of the proprietor) can be corrected.
- Formatting/editing errors introduced by the EPO that were not indicated in the text or in the Notice of Intention to Grant can also be corrected (so long as the errors appear in a part of the text that has not been amended i.e. in a part of the text that would not be expected to have any changes).
- It is possible to appeal the decision to grant on the basis that the proprietor is adversely affected by the text containing errors. However, the EPO is resolute that the proprietor alone bears the responsibility for any errors remaining in the approved text, whether the error was made by the proprietor or by the EPO, so chances of success at appeal are low.
- The proprietor can also try to correct errors in limitation proceedings. However, it is not permissible to introduce non-limiting amendments solely to tidy up unclear claims, to make amendments to improve the patent, or to make cosmetic changes – the amendments must be limiting and a consequence of a reduction in the extent of protection (scope) conferred by the claims.
- There is also the possibility of correcting errors during subsequent opposition proceedings (if an opposition is filed). However, any amendments made in opposition proceedings are only admissible if they are occasioned by the grounds for opposition – opposition proceedings cannot be used “merely to tidy up and improve the disclosure in the patent”. Again, the amendments cannot extend the subject matter of the patent as granted (must be limiting).
Taken together, the opportunity to correct errors in a European patent after grant is extremely limited before the EPO once the applicant has approved the text intended for grant. Therefore, it is imperative that the applicant ensures that the text intended for grant is accurate and complete before approval.
If errors are noted after the text has been approved, immediate action should be taken to try to correct the errors before there is a decision to grant. Thereafter, opportunities to correct are diminished.
The EPO is clear and adamant that the responsibility rests with the applicant. In fact, the EPO has discontinued allowing the applicant to waive approving the text (following inconsequential amendments), shifting the burden of ensuring the text is accurate and complete entirely back to the applicant.
With the number of patents granted by the EPO increasing year-on-year, the opportunity for errors to be introduced or go unnoticed in a patent is also increasing, so make sure that you don’t fall at the final hurdle!
If you are unsure about the final stages of the grant procedure before the EPO, contact Donal M Kelly, European Patent Attorney.