Wednesday, 29 November 2017

T 1332/12 - Admission of corrected translation of prior art in opposition appeal


The opposition division decided that the subject-matter of claim 1 of the main, first, second and third auxiliary requests lacked inventive step over the disclosure of document D7 (JP 07-131734 A) and the common general knowledge of the person skilled in the art (Articles 56 and 100(a) EPC). For the analysis of inventive step, the opposition division referred to document D7T, which was a JPO machine translation of document D7 into English. The patent proprietor (appellant) filed an appeal against this decision and requested that the decision be set aside. In the statement of grounds of appeal, it requested that the patent be maintained in amended form. It submitted arguments as to why the subject-matter of claim 1 of each of the requests met the requirements of Article 56 EPC. With a letter dated 12 October 2015, the appellant submitted a different translation of document D7 (D7JPO) because "the Japanese and the original and the previously translated prior art document D7T is not precise in many aspects". In a communication under Article 15(1) RPBA, annexed to the summons to oral proceedings, the board indicated that it tended to agree with the opposition division's finding that the then second and third auxiliary requests lacked inventive step. It also indicated that it had to be discussed whether translation D7JPO should be admitted into the appeal proceedings (Article 13(1) RPBA).

Summary of Facts and Submissions

I. The appeal is against the interlocutory decision of the opposition division that, account being taken of the amendments made by the patent proprietor according to the then sixth auxiliary request, European patent No. 1 848 203 and the invention to which it related met the requirements of the EPC (Article 101(3)(a) EPC). The patent is based on European patent application No. 06 008 001.7.

II. Notice of opposition to the patent had been filed by the Interessengemeinschaft für Rundfunkschutzrechte e.V. (hereinafter: the respondent).

III. The opposition was based on the grounds under Article 100(a) EPC.

The opposition division decided that the subject-matter of claim 1 of the main, first, second and third auxiliary requests lacked inventive step over the disclosure of document D7 (JP 07-131734 A) and the common general knowledge of the person skilled in the art (Articles 56 and 100(a) EPC), and that the subject-matter of claim 1 of the fourth and fifth auxiliary requests extended beyond the disclosure of the application as filed (Article 123(2) EPC). For the analysis of inventive step, the opposition division referred to document D7T, which was a JPO machine translation of document D7 into English.

IV. The patent proprietor (hereinafter: appellant) filed an appeal against this decision and requested that the decision be set aside. In the statement of grounds of appeal, it requested that the patent be maintained in amended form on the basis of the claims according to a main request or an auxiliary request, corresponding to the second and third auxiliary requests, respectively, underlying the decision under appeal. It submitted arguments as to why the subject-matter of claim 1 of each of these requests met the requirements of Article 56 EPC.

V. The respondent filed a reply to the appeal, and requested that the appeal be dismissed.

VI. With a letter dated 12 October 2015, the appellant submitted a different translation of document D7 (D7JPO) because "the Japanese and the original and the previously translated prior art document D7T is not precise in many aspects". The appellant provided additional arguments as to why the subject-matter of claim 1 of the main request and the auxiliary request should be considered to involve an inventive step (Article 56 EPC).

VII. In a communication under Article 15(1) RPBA (Rules of Procedure of the Boards of Appeal, OJ EPO 2007, 536), annexed to the summons to oral proceedings, the board indicated that it tended to agree with the opposition division's finding that the then second and third auxiliary requests lacked inventive step. It also indicated that it had to be discussed whether translation D7JPO should be admitted into the appeal proceedings (Article 13(1) RPBA).

VIII. In reply to that communication, the appellant argued that D7JPO was not late-filed because it had been submitted in response to the opponent's interpretation of D7 in the reply to the statement of grounds of appeal. It submitted further arguments in support of inventive step.

IX. The respondent informed the board with a letter dated 22 September 2017 that it would not be represented at the oral proceedings.

X. Oral proceedings before the board were held on 11 October 2017 in the absence of the duly summoned respondent.

At the beginning of the oral proceedings, the chairman informed the appellant that translation D7JPO was admitted into the proceedings and the discussion of inventive step was to be based on it.

During the oral proceedings, the appellant, in essence, reiterated the arguments set out in the written proceedings.

The appellant requested that the decision under appeal be set aside and that the patent be maintained in amended form on the basis of the claims according to the main request or the auxiliary request, corresponding to the second and third auxiliary requests, respectively, underlying the decision under appeal.

The chairman noted that the respondent had requested in writing that the appeal be dismissed.

XI. At the end of the oral proceedings the chairman announced the board's decision.

XII. Claim 1 of the main request reads as follows:

"A method of converting video images, comprising: [...] "

XIII. Claim 1 of the auxiliary request differs from claim 1 of the main request in that it also includes the following feature [...].

XIV. The opposition division's arguments, as far as they are relevant for the present decision, may be summarised as follows:

Document D7 was identified as the closest prior art for the assessment of inventive step 
(Article 56 EPC). The opposition division reasoned that "D7 appears to achieve the same effect as the claimed subject-matter, since distortions created by non-linear scaling are compensated for the text/title/caption portion [...] D7 provides the same effect for horizontal scrolling text, since scrolling text will be moving on a field by field basis which is taken care of in the processing by circuitry of fig. 8".

XV. The appellant's arguments, as far as they are relevant for the present decision, may be summarised as follows: [...].

XVI. The respondent concurred with the opposition division that D7 disclosed [...].

Reasons for the Decision

1. The appeal is admissible.

2. Admission of translation D7JPO into the appeal proceedings (Article 13(1) RPBA)

2.1 The respondent filed a copy of Japanese application D7 (JP 07-131734 A) as evidence of the prior art under Article 54(2) EPC 1973 and a JPO machine translation of that document into English (D7T). In response to the respondent's reply, the appellant filed document D7JPO, which is also a JPO machine translation of document D7 into English, but of a later date and, in the appellant's view, a more accurate translation.

2.2 There is nothing in the EPC to prevent a party from filing a corrected translation of a document filed as evidence, even if the evidence and/or translation was filed by the other party to the proceedings. The board takes the view that this also applies if the document is a patent application, taking into account that, under the EPC, the translation of a European patent application or an international application into an official language of the EPO may generally be brought into conformity with the application as filed (Article 14(2) EPC 1973 regarding European patent applications; decisions T 700/05 and T 1483/10 regarding international applications). Hence, the board considers that the translation into English of Japanese prior-art document D7 may be brought into conformity with the original.

2.3 Moreover, the board concurs with the appellant that the differences between the two translations are minor and result in a linguistic clarification of certain passages in D7T without changing its technical disclosure.

2.4 In view of the above, the board, exercising its discretion under Article 13(1) RPBA, decided to admit translation D7JPO into the appeal proceedings and base the discussions of inventive step on D7, referring to the text of translation D7JPO.

3. Main request - inventive step (Article 56 EPC 1973)

3.1 -3.6 [...].

3.7 Thus, the board concludes that for the reasons set out in points 3.1 to 3.5 above, the subject-matter of claim 1 of the main request lacks inventive step over the disclosure of document D7 combined with the common general knowledge of the person skilled in the art (Article 56 EPC 1973). Hence, the patent cannot be maintained in amended form on the basis of the claims of the main request.

4. Auxiliary request - inventive step (Article 56 EPC 1973)

4.1 [...]

4.2 Thus, the board concludes that for the reasons set out in section 3 and point 4.1 above, the subject-matter of claim 1 of the auxiliary request lacks inventive step over the disclosure of document D7 combined with the common general knowledge of the person skilled in the art (Article 56 EPC 1973). Hence, the patent cannot be maintained in amended form on the basis of the claims of the auxiliary request.

5. In view of the above, neither of the appellant's requests is allowable. Hence, the appeal is to be dismissed.

Order

For these reasons it is decided that:


The appeal is dismissed.


This decision T 1332/12 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T133212.20171011. The file wrapper can be found here. Photo "Japanese style garden" by Tanaka Juuyoh obtained via Flickr under CC BY 2.0 license (no changes made).

1 comment :

  1. Fairness prevailed4 December 2017 at 09:43

    One way to come out of such difficulties with machine translated documents, is to provide a sworn translation in an official language of the EPO of a document published in a non-official language. But this can be expensive.
    The practical view adopted by the BA is to be welcomed.

    ReplyDelete

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