One argument raised by the opponents during the EPO proceedings was that the European patent should not have been granted with a GB designation, because the request for grant included the following statement (click for a larger version):
The examining division had nevertheless allowed the application to proceed to grant with the GB designation intact. Both the opposition division and the appeal board concluded that there was nothing they could do, since the ability to correct any such errors was only in the remit of the examining division, and since Premium was not a party to the proceedings before the examining division and not entitled to appeal. The GB designation therefore stood. There was nothing further the opponents could do, so the only options left for them was to fight the patent in each country, which at least Premium continues to do.
Premium have now had another go at trying to get the GB designation removed, this time through the unusual step of applying for a correction under Rule 50 of the UK Patents Rules 2007. A decision relating to this request, which resulted in a hearing at the IPO, has now been issued: BL O/281/11. Premium argued that, since the UK was expressly excluded as a designated state by the applicant, no European patent (UK) ever existed and therefore the UK register should be corrected to reflect this. According to Premium, nothing that Virgin or the EPO did subsequently could change the fact that there had never been a GB designation, and any suggestion that there was an EP(UK) was an error that should be corrected insofar as it appeared on the UK register. They put forward the case of Arrow v Merck [2007] EWHC 1900 (Pat) in support of their argument, as this related to a correction being made to remove a GB designation following grant by the EPO. However, as the hearing officer noted, in that case the EPO had realised there had been a mistake and issued a corrigendum afterwards.
The hearing office pointed out that the difference in this case was that the EPO had not considered there was anything it could or would do, even if it considered that there had been a mistake. For the comptroller to come to a conclusion that any error had been made that could then be corrected, it would be necessary to look afresh at the facts considered previously by the EPO examining division and effectively come to a view on the validity of what had been done. This would, the hearing officer considered, amount to a review of a determination by the EPO which, particularly in the context of an ex parte request for correction of the register, was not open to him. In contrast to the provisions governing revocation on patentability grounds, the comptroller had been given no power to review decisions made by the EPO, and the hearing officer could not see how he could have any sort of power to do so under the UK Act and Rules. Because there was no basis on which a correction could be made, the request was refused.
This was to be expected. The UK is clearly bound by Art. 138 EPC.
ReplyDeleteUnless G 1/10 (question 1) has a surprising outcome, the ED could still issue a correction under R. 140 EPC. However, in my view an incorrect designation cannot be corrected, since it affects the substance of the decision, not just the form in which the decision was expressed (G 8/95).
Btw, I believe this post and discussion are of some relevance as well.
Hmmm, according to par. 6.3 of J 7/96, a designation can still be withdrawn between the date of a decision to grant and the date of the publication of the mention of the grant.
ReplyDeleteThis is interesting. Clearly, and as confirmed by J 7/96, par. 6.1, the EPO is bound by the decision to grant from the moment it is issued. This decision can only be changed following an appeal, or by a decision to correct. Apparently, the Board in J 7/96 considers it possible to withdraw a designation with legal effect _after_ the decision to grant has been issued and _without_ a decision to correct. The conclusion from J 7/96 should be that designations are not part of the decision. If this is correct, then Premium was right in saying that the EP(UK) patent has never existed and that the registers should be updated to corectly reflect this legal situation.
However, I disagree with J 7/96 that designations can still be withdrawn with legal effect after the decision to grant has been issued ;-)
To summarise, I believe there are three possible positions:
(1) a designation is part of the substance of a grant decision. In this case, it cannot be corrected under R. 140 EPC or in any other way (unless the applicant is negatively affected and appeals the grant decision).
(2) a designation is only part of the form of a grant decision. In this case, it can be corrected under R. 140 EPC, and the EPO (i.e. the ED) obviously should do so of its own motion whenever it becomes aware of a mistake.
(3) a designation is not part of the decision at all. In this case, everybody can ask the EPO to correct its register (but I assume without legal remedy if the EPO is unwilling), and an alleged designation can also be contested at the national level.
For the moment my position is (1), but I do not exclude anymore that (3) is in fact the correct one. The latter also seems to have been the position of Kitchin J in Arrow v Merck.