T 2187/14 - Filing new machine translations until understandable?
In this appeal in opposition, the opponent filed a Japanese prior art document E10 and a barely understandable machine translation E10* with the grounds of appeal. In the Board's preliminary opinion, annexed to the summons for oral proceedings, the Board indicated that "E10* is a barely understandable translation of E10 which the Board does not intend to consider". In response hereto, the opponent submitted a second computer translation E10**. Did the Board see it as appropriate to allow a party to file numerous machine translations throughout the procedure until it comes up with one that conveys the nuance that supports its case? Or is a certified translation needed at the earliest opportunity? If the Board does allow the first and the second, bad, translations into the proceedings, can they be used in full?
Summary of Facts and Submissions
I. The appeal lies from the decision of the opposition division to maintain European Patent no. 1 638 715 in amended form.
The notice of opposition referred to the grounds of opposition according to Article 100(a) and (c) EPC.
The opposition division refused to admit the opposition ground pursuant to Article 100(b) EPC as being late-filed.
II. Both the patent proprietor and the opponent lodged appeals against this decision. The patent proprietor subsequently withdrew its appeal during oral proceedings before the board. Since both parties initially appealed, they will continue to be referred to as patent proprietor and opponent.
III. State of the art
The opponent referred to the following documents already cited in the opposition proceedings:
[...]
It also cited the following documents in its grounds of appeal:
E4*: Gießerei-Lexikon, Schiele and Schön, Berlin 2001, page 350;
E10: JP 2002-263799
E10*: Machine translation of E10;
E11: JP 61-289947 Abstract;
E12: DE 277 292;
E13: US 2 128 941 A
E14: SU 1 447 544 A1;
E14*: Translation of E14
With letter of 8 July 2015 it also referred to:
E15 [...]
In a communication dated 24 November 2017, pursuant to Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA), annexed to the summons to oral proceedings, the Board informed the parties of its provisional opinion.
In response to the Board's communication and the patent proprietor's further submissions, the opponent submitted further documents:
E10**: A 2nd computer translation of JP 2002-263799 A (E10);
E15 - E 18 [...]
IV. Oral proceedings were held on 19 April 2018. At the end of the debate the parties confirmed the following requests:
The opponent requested that the decision under appeal be set aside and the patent be revoked in its entirety.
The patent proprietor withdrew its appeal.
V. The following feature numbering of claims 1 and 27 in the version that the opposition division considered could be maintained as used in the contested decision will also be referred to by the Board:
Claim 1:
[...]
Claim 27:
[...]
VI. Claims 1 and 27 in the version the opposition division considered could be maintained.
(a) Opponent's case,
Consideration of documents not filed during the opposition proceedings
These documents should be taken into consideration in the appeal proceedings since they have been filed in response to the patent being maintained on the basis of a claim filed for the first time during oral proceedings before the opposition division.
Article 100(b) EPC, sufficiency of disclosure
[...]
Article 54 EPC, novelty
[...]
Article 56 EPC, inventive step
[...]
Admissibility of documents not filed during the opposition proceedings
These documents should not be taken into consideration since they have been filed more than six years after the expiry of the opposition period. In particular, the first reference to E15 was filed after the statement of grounds of appeal was submitted and is not even concerned with the same type of casting method. The second reference to E15, E10**, E16 and E17 were filed after the summons to oral proceedings.
Article 100(b) EPC, sufficiency of disclosure
The opposition division exercised its discretion correctly in not admitting this late-filed ground of opposition into the proceedings. In particular, during the opposition proceedings, the opponent did not submit that the self-supporting surface could not be achieved over the whole range between the solidus and liquidus temperatures. No consent is given for it to be admitted into the appeal proceedings.
Claim 1, novelty
[...]
[...]
Reasons for the Decision
1. Consideration of late-filed documents (Articles 12(4), 13 RPBA)
1.1 Documents E4* and E10 to E14* were filed for the first time with the opponent's grounds of appeal. Therefore, it is necessary to assess whether they should have been submitted earlier (Article 12(4) RPBA).
1.2 E4* is a response to the opposition division's interpretation of the term "Erstarrung" given in the decision under appeal. Thus, it has been filed at the earliest possible point in time, and as such can be taken into consideration, particularly since this is an important aspect when considering the content of E3.
1.3 E10* is a barely understandable machine translation of E10. E10** is a second and allegedly improved machine translation submitted in response to the Board's criticism of E10*. However, the Board does not see it as appropriate to allow a party to file numerous machine translations throughout the procedure until it comes up with one that conveys the nuance that supports its case. A certified translation should have been filed at the earliest opportunity. Therefore, these documents will be considered only to the extent that they might help in understanding the figures of E10.
1.4 E11, E12 and E13 have been cited to support alternative attacks on inventive step which should have been made before the opposition division; therefore these documents will not be taken into consideration.
1.5 E14, together with the English translation E14*, are very relevant to the question of novelty (see below) of the amended apparatus claim 27 filed during the oral proceedings before the opposition division. Since these documents were filed at the earliest opportunity and are relevant, the Board will take them into consideration.
1.6 References to E15 were submitted after the grounds of appeal were filed. Further, since E15 was only cited as evidence that a meniscus is present on the upper surface of the molten metal which is no longer a subject of debate in the proceedings, it will not be taken into consideration.
1.7 The opposition division did not admit E7 into the proceedings since it only concerns an apparatus for determining the surface level of molten metal in casting processes. The Board considers the opposition division exercised its discretion correctly and will not take E7 into consideration.
2. Article 100(b) EPC, sufficiency of disclosure
[...]
3. Article 123(2) EPC, extended subject-matter
[...]
4. Claim 1, Novelty
[...]
5. Claim 27, Novelty
[...]
6. Claim 1, Inventive step
6.1 When account is taken of the fact that E11, E12 and E13 will not be taken into consideration under Article 12(4) RPBA, the following attacks against inventive step remain:
E3 in combination with:
(i) the skilled person's general knowledge; or
(ii) E9 (see in particular column 3, lines 59 to 62 and figure); or
(iii) E10; or
(iv) E6
6.2 As reasoned above when examining novelty, the subject-matter of claim 1 differs from the method known from E3 by feature 1ib:
- allowing the second alloy pool to contact the first alloy pool such that the upper surface of the second alloy pool contacts the self-supporting surface of the first alloy pool at a point where the temperature of the self-supporting surface is between the solidus and liquidus temperatures of the first alloy.
6.3 The technical effect of this feature is to improve the bond between the two alloys of the composite ingot.
The objective technical problem can therefore be defined as one of providing an improved connection between the cladding and the core.
6.4 E3 in combination with the skilled person's general knowledge
6.4.1 The Board does not accept the opponent's submission that since E3 indicates that the solution to overcome the problems associated with contacting two molten alloys (see page 1, lines 20 to 29) when casting a composite ingot, is to pre-solidify the cladding alloy, the skilled person would immediately understand from E3 that it was sufficient to cool the cladding alloy such that it was not in a liquid state, but not necessarily completely solidified. As already discussed in relation to novelty, the constant emphasis in E3 is to ensure that the portion of the cladding alloy contacting the molten core alloy is solidified.
6.4.2 As the patent-proprietor has argued, the presence of a self-supporting surface between the solidus and liquidus temperatures is not a trivial feature, and in order to achieve one the skilled person would have to provide the apparatus of E3 with the appropriate cooling control systems, as opposed to just simply ensuring that enough cooling is provided to ensure that the cladding material is solidified at the contact point.
6.5 E3 in combination with E9
[...]
6.6 E3 in combination with E10
6.6.1 From the figures of E10 it is apparent that an alloy sheet 21 is pressed by cooling rollers 5A, 5B onto a second alloy 11A which has a molten core 11. Therefore, E10 concerns a process in which an alloy in a solid state is initially contacted with a molten alloy and which is subjected to constant pressure. Consequently, there is no suggestion of providing a self-supporting surface in the mushy state which is contacted by a molten alloy since the process relies on the pressure applied.
6.7 E6 in combination with E3
6.7.1 In the method disclosed in E6, the temperature of the self-supporting surface at the contact point is not between the solidus and liquidus lines since solidification has taken place (see page 2, lines 34 to 37 and lines 107 to 114). The essential idea behind the method according to E6 is to avoid oxidation of the surfaces by bringing the first molten alloy into contact with the second molten alloy as soon as this has solidified. There is no suggestion that this should occur when the second alloy is in the mushy state.
Therefore, a combination of E6 with E3 would also not lead to the subject-matter of claim 1.
7. Claim 27, Inventive step
[...]
Order
For these reasons it is decided that:
The appeal of the opponent is dismissed.
I. The appeal lies from the decision of the opposition division to maintain European Patent no. 1 638 715 in amended form.
The notice of opposition referred to the grounds of opposition according to Article 100(a) and (c) EPC.
The opposition division refused to admit the opposition ground pursuant to Article 100(b) EPC as being late-filed.
II. Both the patent proprietor and the opponent lodged appeals against this decision. The patent proprietor subsequently withdrew its appeal during oral proceedings before the board. Since both parties initially appealed, they will continue to be referred to as patent proprietor and opponent.
III. State of the art
The opponent referred to the following documents already cited in the opposition proceedings:
[...]
It also cited the following documents in its grounds of appeal:
E4*: Gießerei-Lexikon, Schiele and Schön, Berlin 2001, page 350;
E10: JP 2002-263799
E10*: Machine translation of E10;
E11: JP 61-289947 Abstract;
E12: DE 277 292;
E13: US 2 128 941 A
E14: SU 1 447 544 A1;
E14*: Translation of E14
With letter of 8 July 2015 it also referred to:
E15 [...]
In a communication dated 24 November 2017, pursuant to Article 15(1) of the Rules of Procedure of the Boards of Appeal (RPBA), annexed to the summons to oral proceedings, the Board informed the parties of its provisional opinion.
In response to the Board's communication and the patent proprietor's further submissions, the opponent submitted further documents:
E10**: A 2nd computer translation of JP 2002-263799 A (E10);
E15 - E 18 [...]
IV. Oral proceedings were held on 19 April 2018. At the end of the debate the parties confirmed the following requests:
The opponent requested that the decision under appeal be set aside and the patent be revoked in its entirety.
The patent proprietor withdrew its appeal.
V. The following feature numbering of claims 1 and 27 in the version that the opposition division considered could be maintained as used in the contested decision will also be referred to by the Board:
Claim 1:
[...]
Claim 27:
[...]
VI. Claims 1 and 27 in the version the opposition division considered could be maintained.
(a) Opponent's case,
Consideration of documents not filed during the opposition proceedings
These documents should be taken into consideration in the appeal proceedings since they have been filed in response to the patent being maintained on the basis of a claim filed for the first time during oral proceedings before the opposition division.
Article 100(b) EPC, sufficiency of disclosure
[...]
Article 54 EPC, novelty
[...]
Article 56 EPC, inventive step
[...]
Admissibility of documents not filed during the opposition proceedings
These documents should not be taken into consideration since they have been filed more than six years after the expiry of the opposition period. In particular, the first reference to E15 was filed after the statement of grounds of appeal was submitted and is not even concerned with the same type of casting method. The second reference to E15, E10**, E16 and E17 were filed after the summons to oral proceedings.
Article 100(b) EPC, sufficiency of disclosure
The opposition division exercised its discretion correctly in not admitting this late-filed ground of opposition into the proceedings. In particular, during the opposition proceedings, the opponent did not submit that the self-supporting surface could not be achieved over the whole range between the solidus and liquidus temperatures. No consent is given for it to be admitted into the appeal proceedings.
Claim 1, novelty
[...]
[...]
Reasons for the Decision
1. Consideration of late-filed documents (Articles 12(4), 13 RPBA)
1.1 Documents E4* and E10 to E14* were filed for the first time with the opponent's grounds of appeal. Therefore, it is necessary to assess whether they should have been submitted earlier (Article 12(4) RPBA).
1.2 E4* is a response to the opposition division's interpretation of the term "Erstarrung" given in the decision under appeal. Thus, it has been filed at the earliest possible point in time, and as such can be taken into consideration, particularly since this is an important aspect when considering the content of E3.
1.3 E10* is a barely understandable machine translation of E10. E10** is a second and allegedly improved machine translation submitted in response to the Board's criticism of E10*. However, the Board does not see it as appropriate to allow a party to file numerous machine translations throughout the procedure until it comes up with one that conveys the nuance that supports its case. A certified translation should have been filed at the earliest opportunity. Therefore, these documents will be considered only to the extent that they might help in understanding the figures of E10.
1.4 E11, E12 and E13 have been cited to support alternative attacks on inventive step which should have been made before the opposition division; therefore these documents will not be taken into consideration.
1.5 E14, together with the English translation E14*, are very relevant to the question of novelty (see below) of the amended apparatus claim 27 filed during the oral proceedings before the opposition division. Since these documents were filed at the earliest opportunity and are relevant, the Board will take them into consideration.
1.6 References to E15 were submitted after the grounds of appeal were filed. Further, since E15 was only cited as evidence that a meniscus is present on the upper surface of the molten metal which is no longer a subject of debate in the proceedings, it will not be taken into consideration.
1.7 The opposition division did not admit E7 into the proceedings since it only concerns an apparatus for determining the surface level of molten metal in casting processes. The Board considers the opposition division exercised its discretion correctly and will not take E7 into consideration.
2. Article 100(b) EPC, sufficiency of disclosure
[...]
3. Article 123(2) EPC, extended subject-matter
[...]
4. Claim 1, Novelty
[...]
5. Claim 27, Novelty
[...]
6. Claim 1, Inventive step
6.1 When account is taken of the fact that E11, E12 and E13 will not be taken into consideration under Article 12(4) RPBA, the following attacks against inventive step remain:
E3 in combination with:
(i) the skilled person's general knowledge; or
(ii) E9 (see in particular column 3, lines 59 to 62 and figure); or
(iii) E10; or
(iv) E6
6.2 As reasoned above when examining novelty, the subject-matter of claim 1 differs from the method known from E3 by feature 1ib:
- allowing the second alloy pool to contact the first alloy pool such that the upper surface of the second alloy pool contacts the self-supporting surface of the first alloy pool at a point where the temperature of the self-supporting surface is between the solidus and liquidus temperatures of the first alloy.
6.3 The technical effect of this feature is to improve the bond between the two alloys of the composite ingot.
The objective technical problem can therefore be defined as one of providing an improved connection between the cladding and the core.
6.4 E3 in combination with the skilled person's general knowledge
6.4.1 The Board does not accept the opponent's submission that since E3 indicates that the solution to overcome the problems associated with contacting two molten alloys (see page 1, lines 20 to 29) when casting a composite ingot, is to pre-solidify the cladding alloy, the skilled person would immediately understand from E3 that it was sufficient to cool the cladding alloy such that it was not in a liquid state, but not necessarily completely solidified. As already discussed in relation to novelty, the constant emphasis in E3 is to ensure that the portion of the cladding alloy contacting the molten core alloy is solidified.
6.4.2 As the patent-proprietor has argued, the presence of a self-supporting surface between the solidus and liquidus temperatures is not a trivial feature, and in order to achieve one the skilled person would have to provide the apparatus of E3 with the appropriate cooling control systems, as opposed to just simply ensuring that enough cooling is provided to ensure that the cladding material is solidified at the contact point.
6.5 E3 in combination with E9
[...]
6.6 E3 in combination with E10
6.6.1 From the figures of E10 it is apparent that an alloy sheet 21 is pressed by cooling rollers 5A, 5B onto a second alloy 11A which has a molten core 11. Therefore, E10 concerns a process in which an alloy in a solid state is initially contacted with a molten alloy and which is subjected to constant pressure. Consequently, there is no suggestion of providing a self-supporting surface in the mushy state which is contacted by a molten alloy since the process relies on the pressure applied.
6.7 E6 in combination with E3
6.7.1 In the method disclosed in E6, the temperature of the self-supporting surface at the contact point is not between the solidus and liquidus lines since solidification has taken place (see page 2, lines 34 to 37 and lines 107 to 114). The essential idea behind the method according to E6 is to avoid oxidation of the surfaces by bringing the first molten alloy into contact with the second molten alloy as soon as this has solidified. There is no suggestion that this should occur when the second alloy is in the mushy state.
Therefore, a combination of E6 with E3 would also not lead to the subject-matter of claim 1.
7. Claim 27, Inventive step
[...]
Order
For these reasons it is decided that:
The appeal of the opponent is dismissed.
This decision T 2187/14 (pdf) has European Case Law Identifier: ECLI:EP:BA:2018:T218714.20180419. The file wrapper can be found here. Photo "Bad Route Road freeway exit in Montana, 1993" by Robert Ashworth obtained via Flickr under CC BY 2.0 license (no changes made).
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BoA did not respect rule 3(3)
ReplyDeleteBoa did not respect rule 5
A single correction filed as a correction of an apparently insufficient translation also does not qualify as 'numerous machine translations throughout the procedure' by any reasonable standard.
Did I miss something (and yes, I did look at the original file) or is this simply a very questionable decision?
You missed something.
DeleteI also find it hard to reconcile with R.3(3) and R.5: those do not allow to ignore evidence in a wrong language before having asked for a certified translation. What did I/we miss?
DeleteWhy would this be the case? (2x)
DeleteThere seems to have been no problem with a Japanese document having been filed, together with a translation. And yes, they could have asked for a certified translation, but they did not.
Not having read much into the case, the problem to me seems to have been that the arguments used were based on a faulty translation. That per se is not a problem, but it is the responsibility of the opponent to make his argument sound. If by filing an optimized translation, also the argument is changed, one can indeed say the case as defended is not the case as made at the time of filing the opposition.
In the provisional opinion of the BoA with the summons for OP the only thing that was said about E10 was:
Delete‘E10* is a barely understandable translation of E10 which the board does not intend to consider’
Nothing more was said by the BOA. No request for a better translation, and even less so for a certified translation.
In its response the opponent filed a better machine translation, and the BoA did not even consider it with a (silly, if you ask me, but I wasn’t present at the discussion) argument.
What else was the opponent to do? Out of the blue it is announced that they won’t consider E10 because the translation is not good enough. So the opponent files a better translation. What does the BoA say: ‘You filed numerous machine translations throughout the procedure’. Wrong. The opponent filed 2 machine translations, and the second one only after it was alerted to the fact that the BoA didn’t understand it.
There is nothing in the file to suggest that the argument of the opponent changed with the translation. In both cases the feature allegedly disclosed by E10 was a feature called 1ib.
Rule 3says ‘The European Patent Office may, however, require that a translation in one of its official languages be filed’
Note that it says ‘may require’. Not ‘does require’. EPO has to ask for a translation, as it is up to EPO to decide if they need one. There is no obligation in the EPC, not even implicit, on a party to file a good quality translation of evidence on its own initiative.
A party has its own responsibility to provide a sound argument. If the argument (or the evidence) is flawed in some respect (for instance, due to a document not being understandable), that should be at the party's own expense. The party is taking a risk, if they rely on the assumption that the EPO will ask for a better translation if they do not understand the argument as initially made. I agree that a certified translation seems not to have been mandatory. But I do see the point, that at least a *good* translation should have been filed, *if the party wants to rely on that translation*; not just because the Board wants to have it.
DeleteBTW, the Board did not say "You filed numerous machine translations throughout the procedure". They merely make a general statement, not necessarily referring to the party at hand, whether or not they should accept "a party" (in general) filing "a number" (the word "numerous" may not be very carefully chosen) of translations until a certain one is filed containing a "nuance" that supports the party's case. This is an understandable point of view for the Board, if the respective "nuance" is indeed presented for the first time with the filing of the respective translation. If however, the same "nuance" was already contained in the original argument, referring to the Japanese document as evidence, then there indeed should not be any limitation to filing a correct translation, but then merely as proof to support the original statement. That to me seems to be the issue here: when was the "nuance" presented for the first time to the Board?
A party has indeed its own responsibility to provide a sound argument. But this sound argument may be based on evidence in any language, according to the EPC
DeleteIf an EPO department (eg OD or BoA) can not understand the argument because they can't understand the language of the evidence, they can ask for a translation.
A party is under no obligation to provide a translation because the other party might not understand the language of a piece of evidenece. It only has to file a translation if requested. So the first, dubious, translation can be disregarded.It was filed out of kindness, without any need. Tough luck to those not understanding it.
I think that R. 12(4) RPBA provides the BoA with the power to hold inadmissible facts or evidence. If it is actually a nuance in an argumentation that shifts the argumentation toward a fresh case, the BoA should have held inadmissible the new arguments (facts) put forward.
DeleteThey should not have held inadmissible the corrected translation because I think the new argument (new nuance) is not necessarily connected to the corrected translation. The corrected translation is - in my opinion - just a document comprising originally filed information in an official language of the EPO, i.e. in a certain sense: no new evidence.
The RPBA cannot overrule the Convention. This is also stipulated in Art, 23 RPBA: "These Rules of Procedure shall be binding upon the Boards of Appeal, provided that they do not lead to a situation which would be incompatible with the spirit and purpose of the Convention."
DeleteHolding a translation inadmissible under R.12(4) RPBA is at odds with R.3(3) and R.5.
So I donot agree that the RPBA gives the power to the Board to hold the new translation in admissile as long as they did not invite for a translation and nothing is filed within the time limit set.
I do agree that the BoA may held inadmissible any new arguments put forward if that is connected to the corrected translaton. That was however not part of the argumentation in this decision.
Under item 1. of the reasons, the BoA indicates that A. 12(4) RPBA and A. 13 RPBA formed the legal basis for the refusal to consider the corrected translation.
ReplyDeleteThe first question that arises for me is whether filing a corrected translation can even represent an amendment to a party's case: In fact, a corrected translation represents information that is identical to the information of the original document that has been filed earlier, with the difference that the information is in a different language. In other words, the originally filed information does not change by filing a corrected translation. The corrected translation only reflects the originally filed information in a more precise manner. It follows that A. 13 RPBA is no grounds for the refusal (in my view).
The next question which arises is whether A. 12(4) RPBA provides a lagal basis for the refusal. A. 12(4) RPBA provides the BoA with a power to hold inadmissible facts which could have been presented or were not admitted in the first instance proceedings.
In this context, the explanation for the refusal given by the BoA (see item 1.3 of the reasons) that "the Board does not see it as appropriate to allow a party to file numerous machine translations throughout the procedure until it comes up with one that conveys the nuance that supports its case." is a rather thin explanation. In my opinion, an ideal explanation would have shown why the corrected translation is seen as an amendment to a party's case or why the corrected translation should have been filed in first instance proceedings.
The further explanation that "A certified translation should have been filed at the earliest opportunity." even seemns to be incorrect, because as far as I can see, the BoA does not have required the filing of a certified translation according to R. 5, 1st sent. EPC. Thus, R. 5, 2nd sent. EPC is not pertinent.
The same seems to apply for R. 3(3) EPC: The BoA does not appear to have requested that a translation be filed within a period to be specified. In fact, the party seems to have filed the two translations by its own motion. Thus, R. 3(3) 3rd sent. EPC is not pertinent either.
In conclusion, the decision indeed appears to be a controversial one.