A keen attention to detail is of vital importance in our profession. A recent EPO decision, T 0353/18, illustrates what can happen when a discrepancy arises between the clean and annotated versions of an amended claim set, and confirms that there is no legal primacy for one version over the other.
The case concerns an appeal filed by an opponent against a decision of the opposition division to maintain European patent EP1957579 in amended form. During the appeal oral proceedings, a discrepancy between the clean and annotated versions of a previously submitted auxiliary request was discovered. The opponent (appellant) had worked on the assumption that the clean and annotated versions were identical and had prepared its case using only the annotated version. When asked by the board during the oral proceedings, the proprietor (respondent) declared the clean version to be the valid one and confirmed that the discrepancy was due to an error when preparing the annotated version. The discrepancy between the two versions concerned the amounts of two specific components present in the claimed coating composition, this being a central feature to the appellant's objections under Article 123(2) EPC.
The board was in no doubt that both parties had acted in good faith. Nevertheless, it emphasised that "there is no provision in the EPC establishing any legal primacy of the clean version over an annotated version of a request, so if they are different only a declaration by the proprietor can establish the valid one". However, the declaration was not provided until the appeal oral proceedings. The board therefore judged that the appellant could assume the annotated version was correct up to that point in time and should not suffer a disadvantage as a result of having done so.
As there had been no prior exchange of arguments between the parties in relation to the clean version of the auxiliary request, for example in relation to Article 123(2) EPC, the board decided that there were "special reasons" in the sense of Article 11 RPBA 2020 to justify remitting the case back to the department of first instance for further prosecution.
This case serves as a reminder to parties on both sides of proceedings to ensure that the clean and annotated versions of any claim amendments correspond to one another. While it appears that mistakes made in good faith may ultimately be correctable, the time and cost involved with this could be significant.
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