On the face of it one may think that correcting applicant details at the EPO is a minor chore to which not much serious thought needs to be given – it’s just another rather basic “administrative” task isn’t it? Nothing could be further from the truth, as not only is there a high evidential burden to be met, but it can also have an effect on the validity of the patent application, as this article explains.
In the first instance, a distinction needs to be made between those errors made by the EPO itself when the patent application enters the regional phase, and those historical errors which emanate from either the client’s original filing instructions, its professional representatives or former patent offices such as WIPO. With the former it is simply a case of notifying the EPO by letter of their error (which they should then promptly correct with a level of good humour and humility), whereas with the latter a formal request to correct the applicant’s name under Rule 139 of the European Patent Convention (EPC) will need to be filed, together with evidence in support of the request.
There is now wide scope for what can be corrected under Rule 139 with regard to the designation of the applicant, and this can vary from a simple typographical error in the applicant’s name, to the addition, removal or substitution of an applicant. It is important to establish at the outset whether the applicant is to be changed or not, particularly as a request under Rule 139 has retroactive effect. Due to this retroactive effect, any resulting change to the applicant’s identity under Rule 139 will affect the right to claim priority, and consequently could affect the validity of the patent application.
No change to the identity of the applicant
Commonplace errors in the applicant’s name include referring to “Corp” rather than “Corporation” (or vice versa depending on the company’s registered name), or missing off “Corporation” altogether. “The Johns Hopkins University”, which compiles data on the Covid-19 pandemic, is a good example of the type of name where possible typographical errors can occur, such as inadvertently missing off the “The”, or the “s” after “John” or “Hopkin”. Although it is fairly obvious that these are simply errors in the applicant’s correct name, the EPO will still require evidence in support of the correction request to show that there has been no change to the applicant’s “legal identity”. Fortunately for applicants, the EPO seems to have now abandoned asking, rather ridiculously, for a “Certificate of Non-Existence” for the incorrectly named entity.
Changes to the identity of the applicant
It is a fact of life that mistakes do sometimes happen, and a patent application is filed in the wrong group company name, or an inventor is erroneously named as a co-applicant as a result of errors in ticking boxes on the PCT Request form. Equally, ticking the wrong box on the PCT Request form can lead to an intended co-applicant being missed off completely during the international phase, and quite often these types of errors are not picked up until after the patent application enters the regional phase at the EPO. Fortunately, errors such as these can in many cases be fixed at the EPO by an applicant being added, removed or substituted, as necessary, following a successful correction request under Rule 139.
As mentioned earlier, any correction made under Rule 139 has retroactive effect, back to the filing date of the PCT application, and if the identity of the applicant is being changed this will affect the right to claim priority. This means that any correction made at the EPO which changes the identity of the applicant will have the effect of changing not only the applicant(s) to the European patent application, but will also have the effect that the PCT application is deemed to have always been filed in the corrected applicant’s name (at least the EP part of the PCT application). Therefore a correction under Rule 139 can be a useful way to salvage the right to claim priority where there have been errors in naming the applicant(s) of the PCT application within the priority year. For example, this could include circumstances where the priority application has been assigned prior to filing the PCT application, but the PCT application was still filed in the name of the assignor rather than the assignee, or conversely, where the assignor did not assign until after the filing of the PCT application but the PCT application was mistakenly filed in the name of the proposed assignee (as opposed to the assignor, who actually still owned the patent rights at the time the PCT application was filed).
Another reason why it is a very good idea to correct errors in the applicant’s name during the regional phase is that any correction made by the EPO before grant will mean that the patent can then be validated in each country with the correct name. This will avoid the need to take lengthy and costly action at national level to correct the proprietor’s name separately in each validated country after the patent has granted. Instead, one central request (for which there is no official fee) filed at the EPO will suffice.
Evidence in support – a heavy burden
The evidential burden to correct the applicant’s name can be onerous, particularly where the correction will lead to a change in the applicant’s identity, and this burden lies with the party requesting the correction. The EPO advises that it must be satisfied that a mistake was made, what the mistake was, and what the correction should be. In addition, it must be proven that nothing else was intended other than what is proposed as the correction. Suitable evidence (depending on the facts of the case) can include client instructions at the time of filing, declarations or statements from the applicant, company certificates and assignments, with all these types of evidence being admissible as evidence of who the correct applicant should be.
When the correction approach isn’t correct – an assignment instead?
In some circumstances where the intention is to change the identity of the applicant it may be better to achieve this by way of an assignment, rather than a correction request under Rule 139. The advantage of having the current applicant execute an assignment in favour of the correct applicant is that no evidence in support, other than a copy of the signed assignment, is required, so it is usually a much simpler and quicker route to take. In circumstances where it is not clear whether it can be shown that an error has been made due to a lack of evidence and on the face of it the priority claim looks solid (i.e. the priority application and the subsequent PCT application have been filed in the same names), it may be difficult to meet the EPO’s strict evidential burden for a correction, and having the relevant parties execute an assignment instead may be a more appropriate way forward.
In summary, before a request to correct the applicant’s name at the EPO is filed a full investigation needs to be made to establish how and when the error occurred, and this will routinely involve checking previous filings and reviewing all existing documentation between the relevant parties. Only then can it be established whether a correction is appropriate or advisable in the circumstances, and what evidence in support will be required. This is an important practice area of which applicants and their representatives need to be aware, given that the process of requesting correction of the applicant at the EPO can be quite involved, and also because the effects of such corrections are so extensive.
Please contact Kerry Fitchett, a Solicitor who has over 20 years’ experience of dealing with corrections to the applicant at the EPO and in other jurisdictions, or Simon Keevey Kothari, a Barrister who also has extensive experience in this area, both in the Transactions team, for further advice on corrections.