Thursday, 18 February 2010

G 4/08 – Translation Not Welcome

The show must go on. The day after publication of decision G 1/07, the Enlarged Board has issued another decision, which is perhaps a little bit closer to the everyday practice of many European patent attorneys. In its interlocutory decision J 8/07, the Legal Board of Appeal had referred some questions related to the possibility of switching from one official language of the EPO to another upon entry into the European phase of PCT applications. Here are the questions and the answers of the Enlarged Board:

Question 1: If an international patent application has been filed and published under the Patent Cooperation Treaty (PCT) in an official language of the EPO, can the applicant, on entry into the regional phase before the EPO, file a translation of the application into one of the other EPO official languages with the effect that the language of this translation must then be considered as language of the proceedings to be used in all proceedings before the EPO? 

The Enlarged Board appears not to have hesitated for a long time. It considers that the reading of A 158(2) EPC 1973 by the requester is distorting because it isolates this provision from its context (A 158) and its interaction with other provisions (in particular R 107(1)(a)) and is not compatible with the principle of equivalence between the international application and the European application in the case where the EPO is a Designated or Elected Office. According to the Enlarged Board, there is no conflict between the EPC and the PCT provisions; in particular, the possibility of choice provided in Rule 49.2 PCT is linked to the requirement of a translation. Legal Advice 10/92 is considered irrelevant. The Enlarged Board then discusses the situation under the revised EPC and comes to the conclusion that no major change has taken place with respect to the question under consideration. There is no reason to apply A 125. The argument of discrimination between applicants put forward by the epi amicus curiae brief is not considered relevant: if the existing provisions were discriminatory, it is the legislator (and not the instances entrusted with the application of the provisions) who would have to deal with this problem. Therefore, the Enlarged Board comes to the following conclusion:

Answer: When an international application has been filed and published in an official language of the EPO by virtue of the PCT, it is not possible to file a translation of the application into one of the two other official languages when entering into the European phase.

Question 2: If the answer to that question is no, can EPO departments use, in written proceedings on a European patent application (or an international application in the regional phase), an EPO official language other than the language of proceedings used for the application? 

The Enlarged Board considers that the question only arises because some decisions of the Boards have accepted to use another official language. The only reasoned decision, J 18/90, to which most of these decisions (such as T 1125/00 or T 1443/04) refer, has been issued before the entry into force of the abrogation of former R 3 EPC 1973. For the Enlarged Board, the abrogation of this rule is decisive; it deprives the former practice of its legal basis and hinders the EPO from re-introducing this practice via its case law. Therefore, the Enlarged Board comes to the following conclusion:

Answer: In written proceedings concerning a European patent application or an international application having entered the regional phase the departments of the EPO cannot use any of the official languages of the EPO other than the official language used pursuant to A 14(3).

Question 3: If the answer to question 2 is yes, what are the criteria to be applied in determining the official language to be used? In particular, must EPO departments accede to such a request from a party or parties?

Answer: This question is irrelevant (sans objet).

This outcome was to be expected. It is regrettable from the point of view of French- or German-speaking applicants who could have filed PCT applications in English (which allows them to become prior art in the U.S.A. as from their date of filing - or even as from the date of filing of a U.S. provisional application the priority of which is claimed) without losing the advantage of having written proceedings in their native language before the EPO. Now the only way to have all these advantages is to file a PCT application in French or German and a parallel U.S. application claiming the priority of the U.S. provisional application, if there is one. Needless to say, such parallel filing is expensive and ruins some of the advantages of PCT filing.

You can download this decision (in French) here. A translation will be published in the Official Journal of the EPO.

NB: Once again my fellow bloggers Laurent Teyssèdre and Mark Schweizer have been faster than lightning in reporting this decision. Their posts are found here and here.


EQE Tools said...

The outcome of this decision indeed is not very surprising.

I wonder why you say that a PCT filing in (for example) German would not count as prior art in the US as from the date of filing of the PCT application.

PCT Article 11(3) clearly prescribes that the national filing date shall be the date of filing of the PCT application. I don’t know US law that good, yet I have not (yet) heard of a language requirement. As far as I know all that matters is having a US filing date and in that respect any PCT filing has this effect.

For what it’s worth, the company I work for normally does not use the PCT system. We file a national application as priority application and one the same day or a few days later file the exact same document as a US provisional. When this priority application is not in English we do not provide a translation. After one year, we usually file (among others) a corresponding US non provisional application claiming the priority of both the priority application and the US provisional.

Just my 2 cents …

Oliver G. Randl said...

I would say that your practice is ok. The problem only arises when you want to use the PCT.

As far as the entry into U.S. prior art is concerned, a PCT application will only qualify as prior art under 35 USC 102(e) [i.e. even before it is published] if it is in the English language. A German or French PCT, despite of the fact that it designates the United States, will not be prior art under 35 USC 102(e), but only under 35 USC 102(a) (as soon as it is published).

At least that is my present understanding.