Friday, 21 July 2017

J 13/14 - On divisionals and translations...

Translating prohibited?

The present European patent application was filed in English as a divisional application from a parent application which was as an international application filed in German and also published in German. On entry of the parent application before the EPO, a translation into English was filed.

However, filing the divisional application in English turned out to be fatal mistake. 

According to Rule 36(2), a divisional application shall be filed in the language of the proceedings for the earlier application, while providing for an exception in case the latter was not filed in an official language of the European Patent Office, in which case the divisional application may be filed in the (non-official) language of the earlier application while having to provide a translation.

Filing the English translation did not change the language of proceedings of the parent application (which remained German). German is an official language of the EPO, so the exception of Rule 36(2) does not appear to apply. However, one cannot fault the appellant for exploring all legal remedies.


1. For the purposes of Article 76(1), first sentence, and Rule 36(2), first sentence, EPC, a European divisional application of an earlier European patent application which was filed in an EPO official language must also be filed in the EPO official language of the earlier application. Otherwise, it is filed in an inadmissible language. In this case a correction of the language deficiency by means of a translation into the language of the proceedings for the earlier application is neither required under Rule 36(2), second sentence, EPC nor is it even admissible in view of the wording of that provision and the Enlarged Board's decision G 4/08. Nor is it possible for the applicant to remedy the language deficiency in its divisional application by means of a correction under Rule 139, first sentence, EPC or by means of an amendment under Article 123(2) EPC.

2. In accordance with the established jurisprudence of the boards of appeal, a European divisional application which was filed in an inadmissible language cannot be treated as a valid divisional application by analogous application of Article 90(2) EPC.

Tuesday, 18 July 2017

T 1138/12 - Creative opposition issues

In this appeal in opposition several issues came up. The patent proprietor filed a very creative (second) auxiliary request which basically amounted to "Opposition division, tell me which claims (of the first auxiliary request) are allowable". The patent proprietor was also unhappy about the short time it took the opposition division to reach a decision while allegedly not all members were present at the same time. (please note that the decision is 33 pages, so the following is a brief summary!).

Tuesday, 11 July 2017

T 2092/13 - Misleading communication

In the statement of grounds of appeal against a decision from the Examining Division, the appellant also alleged a series of procedural violations in the first-instance proceedings and requested the reimbursement of the appeal fee. In particular, the appellant submitted that no intention to refuse the application was announced in the official communication preceding the refusal of the application. This argument was further developed by the appellant during the oral proceedings held before the board. The Board agreed with the applicant: "It is a general principle governing relations between the EPO and applicants that communications addressed to applicants must be clear and unambiguous so as to rule out misunderstandings on the part of a reasonable addressee, and that an applicant must not suffer a disadvantage as a result of having relied on a misleading communication. Therefore the board considered that, in the specific circumstances of the case, the examining division's communication created a realistic and reasonable expectation that any subsequent negative finding of the examination division on the issue of novelty and/or inventive step would then be communicated to the appellant before any adverse decision on any of these issues would be taken by the examining division. The appellant could therefore not expect that by closely following the examining division's suggestion [in the preceding communication] in respect of the original claims 1 and 2 a decision refusing the application on the grounds of lack of inventive step of these claims could then be immediately issued." 

Tuesday, 4 July 2017

T 0578/12: Dispensing restricted products


Many features of the claimed invention were disclosed in an earlier patent application. However, the earlier patent application had no drawings, nor any description of a detailed embodiment of a dispensing machine. To what extent is the earlier application an enabling disclosure?