Tuesday, August 28, 2018 T 506/16 - Omission of claims pages

Something is missing in the B1 publication...?

In this examination appeal, the Druckexemplar did not contain two of the four claim pages due to an error made by the Examining Division. This error was overlooked by the applicant when approving the text proposed for grant.

The applicant proprietor attempted to correct the error  after approval but the Examining Division:
- rejects as inadmissible the request for correction of the granted patent under Rule 139 EPC,
- refuses the request for correction of printing errors in the patent specification,
- refuses the request for correction of the granted patent under Rule 140 EPC, and
- rejects as inadmissible the request to consider the decision to grant null and void and to issue a further communication under Rule 71(3) EPC.

The proprietor appeals and requests referral to the EBoA, but as the decision shows to no avail.

Wednesday, May 18, 2016 T 1785/15 - Appeal against a grant, following advice from the Office

The proprietor filed an appeal against the decision to grant, after the patent was granted with errors -introduced by amendments by the Examining Division, but implicitly approved by the applicant with his R.71(3) response- and after being pointed out to the option of filing an appeal by the formalities officer of the EPO. But his appeal was not succesfull: in light of the decision G 1/10, the appeal was inadmissible. The Board however ordered a reimbursement of the appeal fee for reasons of equity, as the proprieter filed the appeal based on incorrect advice from the office.

Friday, April 29, 2016 T 2523/11: attempt to voluntarily reduce scope of protection without support in application as filed

In opposition the patent was revoked because there was no support for a range of "0.2mm to 0.8mm diameter for warp and weft yarns". The patent application as filed has support for: "warp yarns having a diameter in the range of 0.20 mm to 0.80 mm and weft yarns having a diameter in the range of 0.20 mm to 1.0 mm". Thus, the proprietor reduced the scope of protection by giving up the diameter range from 0.8mm to 1.0mm for the weft yarns. 

During the Opposition procedure the proprietor used G 1/93 to argue that the scope of protection of features without a technical contribution may be reduced without violating Art. 123(2). The Opponent and the Opposition Division did not share that opinion. 


An appeal was filed with several requests in which the proprietor tried several strategies to overcome the A.123(2) and (3) problem. In the main request a correction of an obvious error was requested (change 1.0 to 0.8mm). In the auxiliary requests several variations of (undisclosed) ranges / values were requested. The outcome of the appeal procedure is that the scope of protection is now reduced to "infinitely small".