A Solution to eDrex OCR Problems

T. Jackson (GB), European Patent Attorney

In his article “eDrex – the new T-Rex?”, epi Information 3/2015, pp104-106, Antero Virkkala highlights the risks for applicants and their representatives posed by the EPO’s new “electronic Druckexemplar” (eDrex) process.

Instead of facsimile copies of the pages submitted by the applicant, the eDrex text intended for grant of a patent includes pages which have been processed by optical character recognition (OCR). These may therefore be subject to errors introduced during the OCR process.

Mr Virkkala shows how such OCR errors could have serious consequences, including loss of rights. This is despite the EPO’s accuracy claims, and despite the best efforts of the applicant’s representative to check the eDrex during the procedure under Rule 71(3) EPC.

Furthermore, he notes that in future the EPO is likely to favour “early OCR processing”, under which all pages would be OCR-processed at the beginning of the examination, not just a few pages at the end of the examination which have amendments by the Examiner.

As Mr Virkkala points out, instead of a page-by-page check that the facsimile Druckexemplar corresponds to the representative’s file copy, an eDrex dramatically increases the amount of checking required. It is now advisable to check the text character-by-character instead of page- by-page.

This article examines the legal background to these problems, and proposes a solution which could be easily implemented by simple changes to the wording of EPO communications.

Legal background

Article 70 EPC governs the authentic text of a European patent, but is mainly concerned with language issues. It is Rule 71a(1) EPC which enables us to determine exactly which version of the application text becomes the authentic text of the granted patent. This rule provides that the EPO’s decision to grant a European patent “shall state which text of the European patent application forms the basis for the decision”. The EPO does this in its standard form letter “Decision to Grant a European patent” (EPO Form 2006A).

For many years, that standard “Decision to Grant” Form 2006A has stated that the European patent is granted “with the title and supporting documents indicated in the communication pursuant to Rule 71(3) EPC”. Thus, the authentic text of the patent is determined not by the EPC, but by the contents of two EPO communications.[1]

In particular, the communication under Rule 71(3) EPC (EPO Form 2004C) encloses the Druckexemplar, and sets out a detailed list of the pages contained within it, with their respective dates of filing. The applicant is deemed to approve this text by paying the required fees and filing translations of the claims (Rule 71(5) EPC). It is well understood that once approved, this will become the authentic text of the granted patent.

In Decision G 1/10, the Enlarged Board of Appeal considered whether Rule 140 EPC can be used to correct errors in the authentic text of a European patent after grant. The decision is clear: such correction is not possible. The applicant has the opportunity at the Rule 71(3) stage to ensure that the patent as granted is in the exact form he wants it to be. The burden lies with the applicant to check the text before approving it. Amongst the Enlarged Board’s reasons was a concern for legal certainty for third parties.

Thus, once the applicant is deemed to have approved the text under Rule 71(5), and it has been granted, the only remedy is an appeal against the Decision to Grant, filed within two months of its date. Errors discovered subsequently cannot be corrected.

More recently, Decision T 1869/12 concerned a case in which the applicant’s response to the Rule 71(3) communication requested (inter alia) deletion of amendments proposed by the Examining Division in the Druckexemplar. A subsequent EPO communication said that the applicant’s request had been allowed, but enclosed copies of pages in which the Examining Division’s amendments still remained. There was thus a discrepancy between the communication and the enclosed pages.

In an obiter dictum, the Board focused on what the Examining Division had intended to grant, rather than on what the applicant had approved. Despite the wording of the communication, it was clear that the Division intended to grant the patent with the amendments shown in the enclosed pages. Thus, while remitting the case back to the Examining Division for a properly reasoned decision, the Board made clear that the text could not be corrected as desired by the applicant.

A possible solution to OCR problems?

In the latest Guidelines for Examination, effective November 2015, it seems that the EPO has recognised this OCR problem, and attempted to ameliorate it. Section H-VI, 4 includes the following:

Exceptionally, and in consideration of all relevant circumstances of the case, formatting/editing errors which were already contained in the text approved by the applicant may be corrected by the EPO of its own motion or at the request of the patent proprietor. Formatting/editing errors are alterations in the patent documents which occur during the preparation of the Druckexemplar and which are indicated neither by standard marks nor in Form 2004C or 2004W.

While this is welcome, does it solve the problem?

It has been suggested that this new Guideline is based on the obiter dictum in Decision T 1869/12 above, which focused on what the Examining Division intended to grant. It can be argued that OCR errors are not intended by the Examining Division. So they can be corrected in the same way as printer’s errors, to bring the granted text into agreement with what was intended.

This may work, but can we be sure? Will future Boards of Appeal always agree that OCR errors can be corrected, “exceptionally and in consideration of all relevant circumstances of the case”?

In T 1869/12 there was a discrepancy between the communication and the enclosed pages, but in the opinion of the Board it was clear how to resolve what the Examining Division intended. Currently, the communication under Rule 71(3) EPC refers both to pages as filed by the applicant on particular dates, and to the enclosed eDrex text. Which is the Examining Division’s intention, if they differ? Will future Boards of Appeal always hold that OCR errors cannot have been intended, especially in future when the entire examination may have been based on a text which included those OCR errors? What if a future Board determines that the OCR-processed text had anyway been approved by the applicant, as required by G 1/10, irrespective of the Examining Division’s intention?

A proposed additional solution

Consider the root of the problem:

• The authentic text approved by the applicant is defined by the content of two EPO communications.
• Currently those communications are worded to define the text not only by reference to pages filed by the applicant, but also by reference to the eDrex, which may contain OCR errors.
• Despite the new Guideline H-VI, 4, it is therefore still possible that the eDrex will be held to be the authentic text, including the OCR errors.
• That authentic text, when approved by the applicant, cannot be corrected if the OCR errors are discovered after grant (Decision G 1/10).

However, what if the wordings of the relevant EPO communications were altered, such that they defined the authentic text differently? What if they defined the text intended for grant in terms that definitely excluded any OCR errors? This would strengthen the new Guideline by removing the uncertainties.
Annexes 1 and 2 give proposals to do exactly that.[2]

The proposed wording of the Rule 71(3) communication (Form 2004C) sets out a detailed list of the pages supplied by the applicant and their respective dates of filing, as at present. But it makes clear that the accompanying eDrex is merely indicative. The eDrex helps the applicant to check the pages, but it is not itself intended to be the authentic text for grant of the patent.

Instead, the authentic text lies only in the pages that the applicant actually filed. So it does not include any OCR errors which may have inadvertently occurred in the production of the eDrex, or earlier in the examination process. If there are amendments by the Examining Division, these will be indicated in the eDrex by standard marks (Guidelines for Examination, C-V, Annex). The proposed wording of the Rule 71(3) communication refers to those standard marks. Thus, the authentic text will include any amendments which the Examining Division intended to make, but will exclude any OCR errors that they did not intend. At the same time, as emphasised by the Enlarged Board in Decision G 1/10, it is important that the authentic text continues to be precisely defined, since this provides legal certainty for third parties. As at present, the proposals ensure that the authentic text is clearly set out in the communication under Rule 71(3) EPC, which can be inspected by third parties.

The B1 publication of the patent will be merely indicative of the authentic text of the patent, and may contain inadvertent errors. These may be errors arising in the publication process after approval of the text, and also OCR errors introduced by the eDrex process. That is also similar to the present situation, where the B1 publication is merely indicative and may contain publication errors, compared to the authentic text. However, under the proposals, OCR errors no longer form part of the authentic text of the patent.

Decision G 1/10 will continue to apply. After grant, the proprietor will be unable to make corrections to the approved Rule 71(3) text under Rule 140 EPC. However, there will be no need to correct OCR errors after grant under that rule, because the approved authentic text will not suffer from them. If the applicant wishes, any OCR errors could instead be corrected by a simple request, in the same way as printer’s errors.