Saturday, 19 September 2009

T 700/05 - Post-grant Correction of an Erroneous Translation of a Japanese PCT

Taking into account that Euro-PCT applications are deemed by A 153(2) to be European applications and the principle that they thus must be treated as favourably as applications made in a Contracting State, a PCT application originally filed in Japanese must be treated in the same way as an application filed in the language of a Contracting State which language is not an official language of the EPC. A 14(2) EPC 1973 must thus be applied by analogy to allow also the translation into English of an original PCT application in Japanese to be brought into conformity with the original Japanese text of the application throughout the proceedings before the EPO, i.e. also including opposition and appeal proceedings. [4.1.1]

In the present case, the original text of the application did not disclose “a light transmittance of at least 50%”, but in view of the certified English translation provided by the patent proprietors only “a linear light transmittance of at least 50%”. The opponents did not dispute that the original application had been mistranslated and that the expression “a light transmittance of at least 50%” in claim 1 and elsewhere should be replaced by “a linear light transmittance of at least 50%”, in line with the provisions of A 14(2) EPC 1973. The Board has no reason to take a different view. [4.2]

A 70(1) EPC 2000 provides that the text of a European patent in the language of the proceedings shall be the authentic text in any proceedings before the EPO. A 70(2) EPC 2000 provides that if the European application has been filed in a language which is not an official language of the EPO that text shall be the application as filed within the meaning of the Convention. This means that a post-grant change to the granted text of a European patent amounts to an amendment of text of the patent as granted, even where, as in the present case, the change is justified as a correction necessary to bring the text into conformity with the originally filed Japanese language PCT application. [5]

Specifically for this case, the correction in the claims and description of the granted text of the patent to read "linear light transmittance" is an amendment which under A 101(3) EPC 2000 needs to be checked for conformity with the requirements of the convention, and in particular for conformity with A 84 EPC 1973 (whose wording is unchanged in the EPC 2000) and A 123(2) and (3) EPC 2000. [5.1]

To read the whole decision, click here.

A 70(1)(2) EPC 2000 has a very unfortunate wording. In particular, the reference to “that text” in A 70(2) is somewhat unclear. Is “the text” of A 70(1) referred to ? The present decision takes this for granted. Things are less clear in the German version of A 70 where A 70(1) mentions no text but a “Wortlaut” (wording) whereas A 70(2) also refers to “that text” (dieser Text). This might be understood to indicate that the text referred to in A 70(2) is the text in the original language. For the sake of completeness, I should add that the French version is analogous to the English version (A 70(1) : Le texte … ; A 70(2) : … ce texte …) When the EPC 2000 was published, I contacted a member of the Legal Division in order to have this point clarified. Unfortunately, my question has remained without an answer. I expect the interpretation used in the present decision to become mainstream because both the English and the French version appear to favour it. The German version might be due to careless translation.