It is often said that prevention is better than cure, and this is certainly the case when it comes to correcting mistakes that make it into a granted patent specification. When the European Patent Office (EPO) intends to grant a European patent, they issue a Rule 71(3) communication which includes a copy of the text intended to form the basis of the granted patent (the so-called ‘Druckexemplar’). If the Druckexemplar contains mistakes, such as typos, correcting them before approving the text is relatively straightforward. If you fail to notice the mistakes, however, there may be little you can do after grant except grin and bear any consequences. Carefully checking the Druckexemplar for mistakes has always, therefore, been important, but in light of changes the EPO have made in creating the Druckexemplar, it might be more important than ever.
As explained here, the EPO began making some procedural changes in January 2014 as part of a drive to modernise its IT systems. Understandably, the EPO wanted to be able to electronically process the publication of patent applications and the publication of documents serving as the basis of granted patent specifications (the Druckexemplar), which they would do using OCR software. As a result, the Druckexemplars that the EPO now issues are OCR’d versions of the pages of the application filed by the applicant, rather than photocopies of the pages.
For the benefit of those not familiar with OCR (Optical Character Recognition), OCR software takes electronic copies of documents, such as scanned documents, and converts them into text documents. OCR is certainly a useful tool, but as anybody who has used it knows, it is not perfect. OCR quite often mistakes certain characters or combinations of characters for others, especially where the original documents are of less than ideal quality. While the quality of documents received by the EPO has improved substantially as online filing has become more widespread, many pending European patent applications will have been filed by fax. The EPO staff likely check the Druckexemplar for mistakes before they send it out, but patent attorneys have noticed that the EPO’s use of OCR has been introducing mistakes.
Of course, the kind of mistakes that OCR software typically introduces will not usually cause problems, even if they do make it into the published patent specification. Unfortunately, however, it is easy to think of ways in which such mistakes do have the potential to cause problems: there are undoubtedly many technical acronyms and initialisms that only differ by one letter, and the meaning of a chemical formula or mathematical equation could be changed quite significantly if one or two letters or symbols are changed. Where the applicant has had an opportunity to review and amend the text before grant, as is the case when responding to the Rule 71(3) communication, there may be little that can be done to correct mistakes post-grant.
There has been discussion about these issues, and CIPA (the professional body for patent attorneys in the UK) is preparing a paper concerning the EPO’s use of OCR software. It will be interesting to see what CIPA has to say, and whether the EPO has anything to say itself, but in the meantime it is important for both patent attorneys and applicants to check the Druckexemplar carefully.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.