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?
If an applicant is capable of understanding Japanese, does the Examiner then still have to provide a translation of a Japanese prior art document? In this case, a PCT application was filed in the Japanese language with Japan as the receiving office. The international search report cites a Japanse language D1 document. According to the Japanese Examiner, the main claim is not inventive with respect to D1.
When the application enters the regional phase before the EPO, the supplementary search report cites the same document as the ISR, with the same obviousness objection. The applicant argues that D1 does not disclose all of the feature that the Examiner alleges.
There are no oral proceedings, as a decision on the state of the file is requested. At no point is a translation of D1 entered into the proceedings. The Examiner does not provide a translation. The applicant does not provide one either; neither during first instance examination nor during the appeal.
The board of appeal does not like it, and sends the case back with a procedural violation. The following catchwords are provided by the board:
In order for the examining division to make its reasoning on the basis of a pertinent prior-art document in a non-official EPO language comprehensible to the board, it must provide the translation used in the examination proceedings of at least the relevant sections of the document (or even of the whole document, if this is necessary for its overall understanding) into an official language of the EPO. Otherwise, the board is unable to examine the reasons for the decision, and in certain cases even whether the decision was justified or not, which amounts to a violation of the legal requirement for reasoned decisions under Rule 111(2) EPC (Reasons, point 2.4.2(d)(ii)).
