J 43/11 – When In Rome, Do As The Romans Did

The present case is an appeal against a decision of the Receiving Section (RS) that there was a loss of rights after the applicant had paid only 80% of the filing fee.

The decision is interesting because the Board adopts a somewhat liberal interpretation of R 6. There are also some noteworthy obiter dicta.

The applicant, a German monk living in Rome, had filed an application for a wake-up device on July 9, 2010. The filing was in Latin; a German translation was filed in due time. The applicant paid only 80% of the filing fee and referred to R 6(3).

On July 16, 2010, the RS informed the applicant that the filing fee had not been paid in full and that the requirements of R 6(3) were not fulfilled. The applicant was informed that the missing amount could still be paid until August 9; otherwise, the application would be deemed withdrawn.

In a letter dated July 20, 2010, the applicant explained that he was entitled to a fee reduction under R 6(3). He also declared that he “categorically excluded” the payment of the allegedly missing amount.

On December 21, 2010, the RS sent a communication of loss of rights under R 112(1).

The representative of the applicant then requested an appealable decision under R 112(2). This decision was taken on March 24, 2011.

The applicant filed an appeal.

He explained that Latin was indeed an official language in Italy. This could already be seen from the fact that he regularly celebrated offices (“Hochämter”) in Latin in the Contarelli Chapel in Rome. The narrow interpretation of the expression “official language” (Amtssprache) by the RS was inadmissible and had no legal basis in the EPC.

The applicant cited a document stating that Latin was the official language of the catholic Church and and pointed out that in a profoundly catholic (erzkatholisch) country such as Italy Latin should be considered to be one of the official languages.

In this context, the applicant also explained that his broad interpretation of the expression “official language” was possible in all three official languages of the EPC.

Finally, the applicant referred to reports on the imminent accession of the Vatican to the EPC and pointed out that it would not be equitable to deprive an applicant who had his place of business in the Vatican, of the advantages related to the use of its official language. He also cited a press release of the EPO wherein the Office expressed the wish to have members of the Sanctum Officium appointed as Examiners in the near future.

Here is the verdict of the Legal Board of appeal:

*** Translation of the German original ***

[2] The interpretation of R 6(3) together with A 14(4) is decisive for the present appeal.

[3] A 14(4) provides that persons having their residence or principal place of business within a Contracting State having a language other than English, French or German as an official language may file documents which have to be filed within a time limit in an official language of that State. If such a person files a European patent application, then, in application of R 6(3), the filing fee shall be reduced in accordance with the Rules relating to Fees (RRF). Article 14(1) RRF provides that the reduction laid down in R 6(3) shall be 20% of the filing fee.

[4] If amount due as filing fee is not paid in full within one month of filing the European patent application (R 38(1)) then the application is deemed to be withdrawn in application of A 78(2).

Pursuant to Article 8 RRF the Office may, where this is considered justified, overlook any small amounts lacking without prejudice to the rights of the person making the payment. However, as stated in T 905/90 [10], this Article was designed to prevent a loss of rights 

“where an inadvertent error of some kind had led to a slight, small insignificant or trifling underpayment of an amount due in respect of the relevant proceedings. It was never really intended to provide a remedy where a party had deliberately paid a reduced fee, and what is more, in an amount specifically provided for by the law …” (emphasis by the Board). 

Thus Article 8 RRF cannot find application in the present case.

[5] Therefore, what is decisive in the present case is whether the appellant was entitled to a fee reduction, i.e. whether Latin is to be considered as an official language within the meaning of Article 14(4). If it is not, then the RS was right in declaring that the application was deemed to be withdrawn.

[6] The arguments invoked by the appellant […] are not persuasive, for the following reasons.

[6.1] The interpretation of the expression “official language” proposed by the appellant does not resist close scrutiny.

[6.1.1] The fact that the applicant celebrates offices in Latin in Italy does not result in this language being an official language within the meaning of the EPC. “Official language” designates a language of an office, whether the patent office (A 14(1)) or the offices of a Contracting State (A 14(4)). Duden’s lexicon defines “official language” (Amtssprache) as “an official language of a state, a language of legislation” as well as “a language which is accepted in international organisations and which is relevant for drafting agreements, publications etc.”.

[6.1.2] The Board does not contest that Latin is the official language of the Catholic Church. However, as the Catholic Church is not a Contracting State to the EPC until further notice, this fact is completely irrelevant to the legal situation under consideration.

[6.1.3] That the expression “official language” used in A 14(4) is not to be understood in a religious sense also follows from the overall context (Gesamtzusammenhang) of the EPC.

As a matter of fact, the EPC constitutes, according to the first paragraph of its Preamble, a means for strengthening the “co-operation between the States of Europe in respect of the protection of inventions” (emphasis by the Board) and aims at obtaining “such protection … in those States by a single procedure for the grant of patents and by the establishment of certain standard rules governing patents so granted” (Preamble, second paragraph).

These efforts concern the field of intellectual property, which is completely alien to the religious sphere.

In its decision G 1/83 the Enlarged Board of appeal (EBA) has found that the principles of interpretation set out in The Vienna Convention on the Law of Treaties, concluded on 23 May 1969 (reprinted, in part, in OJ EPO 1984, 192) should be applied to the EPC.

In particular, the EBA has explained that the Convention must be interpreted in good faith and that,( unless it is established that the Contracting States intended that a special meaning should be given to a term, the terms of the treaty shall be given their ordinary meaning in their context and in the light of the object and purpose of the EPC (point [5] of the Reasons).

Therefore, it is clear that it is not admissible to refer to special meanings that may be used in the context of religious activities when interpreting certain expressions of the provisions of a Convention in respect of the protection of inventions.

Thus the Board feels compelled to dismiss the interpretation of the expression “official language” in A 14(4) as “language of a religious office” because it is alien (wesensfremd) to the EPC.

As a consequence, this argument of the appellant cannot succeed.

[6.2] As to the accession of the Vatican to the EPC, the Board has not been officially informed although it has heard corresponding rumours. However, this question is not relevant for the decision to be taken because it has not been disputed that on the day of filing the Vatican had not been a Contracting State to the EPC. And even if it had been, this would not have altered the legal situation because the applicant has his residence in Italy and, as he admitted, did not have the nationality of the Vatican. The Board is of the opinion that A 14(4) has to be interpreted in such a way that “residence” refers to “natural persons” and “principal place of business” to “legal persons”. But even if this interpretation is incorrect, it appears to be impossible to refer to the priestly activities of the applicant on the territory of the Vatican in order to justify the existence of a place of business in the Vatican.

[6.3] Thus the applicant is only entitled to a fee reduction if the application was filed in one of the official languages of the Federal Republic of Germany (in view of his German nationality) or the Italian Republic (in view of his residence) that is not an official language of the EPO. However, Latin is not an official language of Germany or Italy (see the booklet “National Law relating to the EPC” (15^th edition, pages 69 and 71).

[6.4] The Board of appeal wishes to add, as an obiter dictum, that the use of former inquisitors of the Sanctum Officium could indeed be beneficial to the EPO. As interrogation specialists the members of this office have a worldwide reputation and are surpassed only by the U.S. Central Intelligence Agency (C.I.A.) and its subsidiaries in the Middle East. Thus it would be advantageous to use these competences in oral proceedings. The Legal Board of appeal would most certainly be interested in making use of those talents within the framework of the application of A 117 and in particular in hearing the parties (A 117(1)(a)), requesting information (A 117(1)(b)) and hearing witnesses (A 117(1)(d)). Moreover, the fact that these examiners have professed vows of obedience, celibacy and poverty has to be welcomed in view of the plans of the EPO to increase its productivity while reducing costs. However, this does not alter the fact that the question of the accession of the Vatican to the EPC and the advantages this might bring to the EPO is irrelevant to the present appeal.

[7] Although the arguments of the appellant have to be dismissed, the Board has come to the conclusion that it is equitable to grant a fee reduction in the present case, for the following reasons.

[7.1] Latin may well be a “dead” language, but it has lived on in the so-called Romance languages, and in particular in the Italian language. Thus it is not absurd to consider Latin as “Ancient Italian” (“Altitalienisch”) very much like the language of the small city states of ancient Greece is referred to as “Ancient Greek” (“Altgriechisch”) or the language of the Torah as “Ancient Hebrew” (“Althebräisch”).

[7.2] The EPC does not distinguish between different forms of a language as they may arise in the course of time, nor would this be appropriate. The reader of examination reports issued by the EPO will see that some Examiners use classical French which Bossuet or Chateaubriand would have approved of, whereas others have a vocabulary and knowledge of grammar corresponding to the Paris suburbs of the 21^st century. The same observation can be made in regard of the case law of the Boards of appeal: some decisions, in particular of the Legal Board of appeal, are drafted in medieval German without anybody seeing the need for a translation.

[7.3] An applicant having its residence or principal place of business in Greece and who filed an application in Ancient Greek would not encounter any difficulty when requesting a reduction of the filing fee. In case the present efforts to make Israel accede to the EPC were successful, a person having its residence or principal place of business in the Holy Land would have the same opportunity, all the more as the Office would not be able to distinguish an application filed in Ivrit (Modern Hebrew) from an application filed in Ancient Hebrew.

[7.4] Thus the Board finds it equitable for an applicant having its residence or principal place of business in Italy and who files an application in “Ancient Italian”, i.e. in Latin, to be offered the possibility of a fee reduction.

[7.5] The question of whether an applicant having its residence or principal place of business in a country the official language of which is another Romance language would also be entitled to a fee reduction when filing in Latin does not have to be answered here.

[7.6] Finally, the Board would like to point out – even though this is not decisive here – that Latin has a special status within the language system of the EPO. This can be seen in particular in the case law of the Boards of appeal, which frequently cite Latin maxims without feeling compelled to offer translations. The person familiar with the jurisprudence of the Boards of appeal may have the impression, and rightfully so, that Latin, although not cited among the official languages in A 14(1) is something like an “unofficial official language” and that there are unwritten rules governing its use.

[8] In view of the above arguments the Board comes to the conclusion that the applicant was entitled to a fee reduction within the meaning of R 6(3). Thus the decision of the RS is to be set aside and the case is to be remitted to the RS for further prosecution.

NB: The Board dismissed the request for reimbursement of the appeal fee.

Should you wish to download the whole decision (in German), just click here.

Unfortunately, as the decision has been anonymised, I cannot provide a link to the file wrapper.

Addendum of April 2: This post is not to be taken seriously (see the date)