Monday, 4 January 2016

T 265/11 - Late correction of translation not allowed

Japanese homework


The main request of the proprietor had been rejected by the opposition division because of added subject matter. One month before the oral proceedings in the appeal procedure the proprietor filed an improved translation of the original Japanese claims as filed. The EPC provides that throughout the proceedings before the European Patent Office, a translation may be brought into conformity with the application as filed (Art. 14(2) EPC) so this seems allowed. Nevertheless, the board is displeased with this tactic and ignores the new translation


 Summary of Facts and Submissions

I. The appeal concerns the interlocutory decision of the Opposition Division of the European Patent Office posted on 25 November 2010 concerning maintenance of European Patent No. 1403832 in amended form.

II. The appellant (opponent) requested that the decision under appeal be set aside and that the patent be revoked. Further, the appellant requested that a translation of the original claims into English filed by the appellant with letter dated 15 September 2015 be used for determining whether the subject-matter of the European patent application extends beyond the content of the application as filed.

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Reasons for the Decision

1. The appeal is admissible.

2. Request for replacement of the translation of the claims

With letter dated 15 September 2015 the appellant filed an uncertified translation of the claims of international application PCT/JP01/05835, which is the original text of the application on which the patent is based. The appellant argued that features b), c), d1) and e1) were different in the originally filed claims with respect to the English translation filed under Article 158(2) EPC 1973 and published.

The appellant requested that the content of the uncertified translation of the claims be used as a basis for the analysis according to Article 123(2) EPC.

According to Article 150(3) EPC 1973 (now Article 153(2) EPC) an international application for which the European Patent Office is a designated or elected Office, and which has been accorded an international date of filing, shall be equivalent to a regular European application. PCT/JP01/05835, for which the European Patent Office is an elected Office, has been accorded an international date of filing of 4 July 2001. Therefore, Rule 7 EPC 1973 (corresponding to Rule 7 EPC) applies mutatis mutandis to the translation of PCT/JP01/05835 filed under Article 158(2) EPC 1973.

No evidence was provided that the translation filed under Article 158(2) EPC 1973 is not in conformity with the original text of the application. Thus, in accordance with Rule 7 EPC 1973, the board assumes that the translation on file is in conformity with the original text of the application for determining whether the subject matter of the European patent extends beyond the content of the application as filed.

Further in this respect, the appellant requested that the case be remitted to the department of first instance, or that the proceedings before the board be adjourned. The appellant provided however no explanation why it could not have presented its objections to the translation on file at an earlier stage, accompanied by proper evidence, e.g. in the form of a certified translation. The respondent requested that the request for remittal or adjournment be rejected.

Since no evidence to the contrary in the sense of Rule 7 EPC was provided proving a non-conformity of the translation on file, and since the request for remittal or adjournment was filed very late, i.e. during the oral proceedings before the board, the request for remittal or adjournment is rejected.

(...)

This decision  T 0265/11 (pdf) has European Case Law Identifier: ECLI:EP:BA:2015:T026511.20151016. The file wrapper can be found here. Photo "How Discovering Japan Changed My Life" by Danny Choo obtained via Flickr under CC BY SA 2.0 license (no changes made).

3 comments :

  1. As the "new" uncertified translation was provided by the appellant 1 month before the OP it could as well be considered as an amendment of a party's case under Art 13(1)RPBA.
    In such a circumstance it would have been wiser to file a certified translation, especially if the aim was to demonstrate added subject-matter on the basis of the translation. That is exactly what the Board suggested in the decision. Such a translation could have been filed in first instance, hence Art 12(4)RPBA could apply as well.
    Plenty of reasons thus for the Board to dismiss the late translation provided by the opponent.

    ReplyDelete
  2. As Raoul correctly points out, the translation was provided by the opponent and not by the proprietor (as suggested in the blog post). So Art. 14(2), second sentence, played no role here.

    ReplyDelete
    Replies
    1. Thanks for the pointer. Although Rule 7 EPC--which is quoted by the board--refers to article 14(2) EPC, the former is the better legal basis here.

      Delete

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