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Corrections (Section 107)

The “two-step test”

7.123 Rule 91(2) sets out the requirements for a correction as follows:

Where such a request relates to a specification, no correction shall be made therein unless the correction is obvious in the sense that it is immediately evident that nothing else would have been intended other than what is offered as the correction.

7.124 Notably this provision applies only to corrections that are made to the specification. The assumption is therefore that correction of other documents, including the abstract are not subject to the same requirement that the error be obvious and it be immediately evident that nothing else would have been intended. Nevertheless, evidence may be required in order to establish that an error has occurred.

7.125 The consideration under Rule 91(2) essentially consists of a two step test (Dukhovskoi’s Application [1985] RPC 8):

(a) Is it clear that there is an error, and
(b) If so, is it clear what is now offered is what was originally intended?

7.126 It must be obvious on the face of the document that there is an error. This encompasses relatively clear errors such as missing pages and the like. However, the consideration is through the eyes of the skilled addressee, and as a consequence their knowledge and their understanding of the document must be taken into account. Thus, while an error in a cited document may not be readily apparent to a casual reader, it may be apparent to the person skilled in the art that the cited document is incorrect. Similarly, the skilled person may have regard to references (such as standard textbooks) in order to confirm that the document is indeed an error.

7.127 The requirement that the correction be “immediately evident” is a strict requirement – the skilled person would understand that nothing other than the proposed correction was intended. Arguments to the extent that the correction “on balance of probabilities” would be the “most likely” solution to the skilled reader should be rejected.

7.128 In some cases it will be readily apparent on the face of the document what the correction should be. However, in the case of cited prior art or numerical data, the correction may not be readily apparent. There is no restriction on the person skilled in the art having regard to other documents in order to determine what was intended. This can include other documents filed with the application, such as the foreign language application in the case of a translated document and the priority document, even if filed later than the original application (see Dukhovskoi’s Application [1985] RPC 8). However, a discrepancy between documents does not necessarily establish that there is an error – this could be indicative of an error of judgment on the part of the drafter (see Tragen’s Application BL O/96/90).

7.129 If the specification makes technical and linguistic sense, then it will not be immediately evident that this would not have been what was originally intended. It follows that it cannot be determined with certainty that the proposed correction would have been intended. It is unlikely in such circumstances that the matter can be dealt with as the correction under Section 107.

7.130 Depending on the circumstances of the case, evidence is to be provided by the applicant to address some of the threshold questions. This may include evidence as to why it would be obvious to the person skilled in the art that there is an error and why the correction would be understood to be original intention.

7.131 The two-step test set out in Dukhovskoi’s Application [1985] RPC 8 has been adopted in Application for correction of a patent by Genpharm International Inc and Objection thereto by Lonza Biologics Tuas Pte Ltd [2014] SGIPOS 9.

7.132 In this case, the corrections to the title of Table 17 to change “affinity” to “avidity” were considered allowable by the hearing officer based on the evidence. The other corrections of general references to “affinity” to read “avidity” throughout the specification were not allowed as either the evidence did not establish that the skilled person would consider it clear that there was an error, or the evidence showed that the skilled person would consider two corrections were feasible.

7.133 In order to meet the requirements of the first step, it must be apparent on the face of the document that there is an error. The standard of proof in this regard is the balance of probabilities; i.e., whether on the balance of probabilities the reader would conclude that there was an error (see R. v the Comptroller-General of Patents ex parte Celltech Ltd [1991] RPC 475). This consideration is made through the eyes of the skilled addressee, the common general knowledge in the art and the skilled person’s understanding of the document.

7.134 Once it has been determined that there is an error, the rectification must be “immediately evident” (see Dukhovskoi’s Application [1985] RPC 8). This is a strict requirement – the skilled person must understand that nothing other than the proposed correction was intended. The standard in this respect is not “on balance of probabilities” or whether the proposed correction is the “most likely” solution to the skilled reader – there must be only one feasible correction. To that end, if several alternative corrections may be envisaged, then the rectification cannot be considered immediately evident. For example, if the document already makes technical and linguistic sense, generally it is not possible to conclude that there is an error and that there is only one feasible rectification for the said error (see R. v the ComptrollerGeneral of Patents ex parte Celltech Ltd [1991] RPC 475).

7.135 The Opponent also argued that the applicant had knowinglyand intentionally chosen to delay the corrections in order to exploit the time delay that the proceedings would cause and the corrections should therefore not be allowed. However, the hearing officer considered that there was no apparent discretion for the Registrar to take such matters into account when determining whether the corrections are allowable under Section 107 and Rule 91.

7.136 The corresponding UK provision has been interpreted as having no restriction on who may request correction. This would in theory allow the Examiner to make corrections during the examination process (with authorisation from the attorney). However, in practice Examiners should only note the error in the written opinion if it is of a significant enough nature. If a significant error is discovered late in the process, such as at the point of establishing the written opinion, then the Examiner may contact the attorney to discuss the matter. Because the Examiner is working with electronic documents, handwritten amendments may not be appropriate, and in most cases the applicant will need to file replacement pages.

7.137 In clear cases (such as where a page has been omitted), the Examiner should indicate in the report that correction of the specification under Section 107 will be required. In general, a request for a correction will be required if matter has been omitted or deleted – such as in the case of a missing page or an error in a chemical structure – and the information cannot otherwise be gleaned from the specification as filed. However, amendment may be the appropriate course of action if the missing information can be ascertained from the specification as filed (that is, no additional matter results from the amendment).