Both the patent proprietor and the opponent appealed against the maintenance of the opposed patent in amended form.
The patent proprietor, an Italian company, filed the notice of appeal in Italian. The same fax also contained an English translation.
The opponent argued that the appeal of the patent proprietor was inadmissible because the English text had been received at the Office before the Italian text. As a matter of fact, the fax shows that the page containing the notice of appeal in Italian was received at 18:26:21 whereas the Italian version was received at 18:26:37, i.e. 16 seconds later.
The Board won’t have it:
[1.2] The opponent (appellant 1) considered that the requirements of R 6(3) concerning the reduction of the appeal fee were not met, that the paid amount was not correct and that therefore, the appeal lodged by the patentee was to be rejected as inadmissible. He referred to the decision of the Enlarged Board of Appeal (EBA) G 6/91 which states that “the persons referred to in A 14(2) are entitled to a fee reduction if they file the essential item of the first act in filing, examination or appeal proceedings in an official language of the State concerned other than English, French or German, and supply the necessary translation no earlier than simultaneously”. The opponent noted that in the present case, the fax transmission of the English translation of the notice of appeal was completed before that of the original Italian notice of appeal and that therefore the English translation has been supplied earlier rather than together with regard to the Italian text.
R 2 and Article 3 of the Decision of the President date 12 July 2007 concerning the filing of patent applications and other documents by facsimile (Special edition No.3, OJ EPO 2007, A 3) read in conjunction with R 99(3) and R 50 allow for the filing of the notice of appeal by facsimile. As set out in Article 5 of this decision documents filed by facsimile are accorded a single filing date. This is in particular to determine whether time limits, which are calculated in terms of days as smallest time unit, have been met. The implication of a single filing date is that a filing of documents by facsimile constitutes a single filing act, so that a facsimile filing for all intents and purposes can be considered equivalent to a filing by other means allowed under R 2(1). With one exception (a fax transmission extending beyond midnight), all documents received in a single fax transmission are thus considered to have been filed together on the same date and form part of a single filing.
Turning to G 6/91 cited by the appellant-opponent, this decision by the EBA considered the questions concerning inter alia filing requirements for fee reduction under R 6(3) arising in a specific case in which an appeal was filed in the form of a letter in Dutch accompanied by a translation into English, cf. summary, point II. The EBA weighed various considerations of such a filing of original and translation “at the same time” (cf. reasons  and ), and held that, indeed, a party who wanted to benefit from a fee reduction under R 6(3) must file the translation “no earlier than simultaneously” with the original, reasons . From a contextual reading of these separate parts the Board infers that the terms “at the same time” and “simultaneously” are used synonymously and are meant at least to cover the case at hand, i.e. where original and translation were filed together in a single filing on the same date. Thus, if original and translation are filed together fee reduction under R 6(3) should apply.
In the present case, as is clear from the transmission date recorded at the top and bottom of each page, all of the pages of the facsimile, including the Italian text and its English translation, were received in a single fax transmission on a single date recorded as 2010-10-18. This is also not changed by the fact that the exact time of reception of the individual pages of the fax transmission was also recorded on each page, thus showing a few seconds of delay between the pages. Consequently, both the notice of appeal in Italian and in its English translation were filed together in a single filing act of single filing date. This situation is thus analogous to that underlying G 6/91 but for the means of filing. As it can be inferred from the above decision of the President that filing by facsimile is legally equivalent to filing by any other means, it follows that the present case should therefore also benefit from a fee reduction under R 6(3). The Board adds that a narrower reading of G 1/91 (sic) which would differentiate between the different filing means would be alien to the broad principle of equity underlying that decision.
That the translation is not expressly identified as such in immaterial. Its nature and function are immediately clear from the express mention of R 6(3) and Article 14(3) RRF (sic) and the corresponding 20% fee reduction. Thus, for example the Receiving Section had no problem in establishing that a fee reduction under R 6(3) was sought, and duly applied one.
The Board concludes that the requirements for a fee reduction of R 6(3) were met and that therefore the correct fee has been paid. As otherwise all requirements of A 108 and R 99 have been met, the Board finds the proprietor’s appeal to be admissible.
Nevertheless, the Board notes that the patentee could have made things clearer by identifying the English version of the notice of appeal as being a translation.
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NB: This decision has been presented on Le blog du droit européen des brevets (here).