T 2422/10 – No Translation Needed

In this case the Board refused a request of simultaneous interpretation from German to the language of the proceedings (English) during the oral proceedings (OPs).

[1.1] According to R 4(1) “any party to OPs before the EPO may use an official language of the EPO other than the language of the proceedings, if such party gives notice to the EPO at least one month before the date of such OPs or provides for interpretation into the language of the proceedings.”

The appellant’s letter of 25 January 2013 with the indication of the use of German was filed in time and, consequently, the appellant was allowed to use this language during the OPs.

However, the respondent’s request of the same day for interpretation from German into English, although filed in due time, is to be rejected.

[1.2] It could be argued – as does the respondent – that if one party to proceedings before the EPO uses an official language different from the language of the proceedings, there shall be an interpretation from that other language into the language of the proceedings for the party/parties using the language of the proceedings.

However, this general rule needs to be set against the principle of efficiency of the proceedings and the duty of all services of the EPO, including the Boards of Appeal, to observe the finances of the EPO.

It is precisely for this purpose that R 4(5) states:

“The EPO shall, if necessary, provide at its own expense interpretation into the language of the proceedings, or, where appropriate, into its other official languages, unless such interpretation is the responsibility of one of the parties.”

It is the Board’s opinion that this wording of R 4(5) allows the Board to assess the necessity of such an interpretation. See in this respect T 131/07 [8.4] acknowledging such discretion

[1.3] The respondent’s professional representative is German and has submitted all substantive submissions in German (see the reply to the statement of grounds of appeal and the reply to the Board’s preliminary opinion). It is therefore evident that this representative is quite capable of understanding any oral submissions of the appellant’s professional representative at the OPs made in German without the need for interpretation. This was also admitted by the respondent’s representative at the beginning of the OPs.

In this respect the request for interpretation for the benefit of the representative is refused.

[1.4] A request for interpretation to the benefit of an accompanying person would not justify the arrangement of interpretation at the expenses of the EPO either because it is the Board’s opinion that accompanying persons do not by themselves have an automatic right to interpretation. This may for instance be dependent on whether the Board intends to let them address the Board, see in this respect T 131/07.

[1.4.1] As set out in its communication of 5 February 2013, the Board itself does not see a need to hear the accompanying person at the OPs.

[1.4.2] Decision G 4/95 sets out the conditions under which an accompanying person may be allowed to make oral submissions. In point (3)(a) of the order it is stated that “Such oral submissions cannot be made as a matter of right, but only with the permission of and under the discretion of the EPO.” The Board, therefore, has a discretional power to allow or not such submissions.

[1.4.3] The accompanying person for the respondent was announced as a technical expert to speak on “novelty and inventive step”. However (as indicated in the Board’s communication of 5 February 2013), these topics constitute the entire substantive issues of the case. These are, however, to be presented by the appointed professional representative in the context of European patent law. The accompanying person is, however, not presented as qualified in the latter or under training to become qualified.

Points (1) and (2) of the order of G 4/95 state that an accompanying person “may be allowed to make oral submissions on specific legal or technical issues on behalf of that party, otherwise than under A 117, in addition to the complete presentation of the party’s case by the professional representative.”

The Board understands this to mean that the topic on which the accompanying person will speak should be specific and should be an addition to the case as presented by the professional representative of the party.

Both conditions are not fulfilled in the present case, the Board therefore does not see any need to allow oral submissions of the person accompanying the respondent’s representative. See in this respect T 774/05 [5].

[1.4.4] The above being as it is, the Board does not see the need to provide for simultaneous interpretation from German to English for the accompanying person. In this respect it concurs with T 418/07 [6], that providing interpretation to suit merely the convenience of a party is not a sufficient reason.

[1.5] The respondent’s representative raised the question what would have happened if a colleague representative, not understanding German, would have attended the OPs instead of him.

It is, however, not the function of the Boards of Appeal to give rulings in their decisions on hypothetical situations or on questions not relevant to the case.

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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.

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

T 1483/10 – Back To China

[2.1] A 14(2) allows for a European patent application to be filed in any language and then to be translated into one of the official languages. Throughout the proceedings before the EPO, such translation may be brought into conformity with the application as filed.

[2.2] According to A 153(2), an international application for which the EPO is a designated or elected Office, shall be equivalent to a regular European application (Euro-PCT application). Under A 153(5) Euro-PCT applications shall be treated as European applications. It is also a general principle that such applications must be treated as favourably as those made in a contracting state (see T 700/05 [4.1.1], also T 353/03). Hence, by analogy, A 14(2) must also allow the translation into English of a PCT application originally filed in Chinese to be brought into conformity with the original Chinese text of the application throughout the proceedings before EPO.

[2.3] The certified translation provided by the appellant with its letter of 17 January 2013 shows that the use of the term “astigmatism plate” was the result of a translation error and the correct term should have been “light-scattering plate”. Accordingly, the replacement of the term “astigmatism plate” by “light scattering plate” in claim 1 is an allowable correction made under Article 14(2) EPC and does not infringe A 123(2).

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T 1688/08 – Language Skills

The home of the skilled person

This is an appeal against the refusal of an application by the Examining Division (ED).

According to the ED, the subject-matter of independent claim 3, which was directed at a 1 x N optical coupler, did not comprise an inventive step over the combined teachings of GB application D5 and Japanese application D6. A skilled person faced with the problem of determining how the device disclosed in document D6 worked, would seek a translation or, should this not be available, similar devices with a functional description. Document D5 discloses such a device excepting use of an annular mixer guide 45 in place of an annular core. Document D5 thus enabled a skilled person to understand that the function of a coupler according to document D6 had to be based on multimode interference.

The Board did not find this approach persuasive:

[3] In relation to claim 3, the division assumed that the skilled person knows that a device according to document D6 is based on the interference of different modes because it works with high efficiency, as set out in the corresponding English abstract, but did not explain how such knowledge relates to a number of features in the claim, for example, to the radial single mode. In fact, in the context of high efficiency, all that the abstract of document D6 discloses is simply

“To reduce the insertion loss, to equalize the photo coupling, and to execute it with high efficiency, by using a repeating rod having a cylindrical optical conductor part whose thickness is similar to the core diameter of an input/output fibre”.

Moreover, the division considered it not possible to determine scaling from the drawings of patent applications as they are typically schematic and of illustrative nature only. In other words, the division could determine neither core diameters nor fibre lengths from the drawing and did not show how, without knowledge of the subject matter claimed, the skilled person’s knowledge provides such features.

[4] Since the division did not find all the claimed features in Japanese-language document D6 and assumed that the skilled person did not understand Japanese, the division removed inconsistencies with the claimed subject matter by reference to the teaching of document D5. This approach is not very convincing because the language of a patent document alone cannot be decisive for the question of whether or not the skilled person considers the technical content of that document. Otherwise, there would be a differentiation between skilled persons according to the language(s) they speak. This would be against the objective assessment of the inventive step. (See, by analogy, T 426/88 [6.4]) In the board’s view, it is not credible either that the skilled person would have believed that another document, such as document D5, having only some features not dissimilar to those actually disclosed in document D6, would correspond to the disclosure of document D6 in relation to subject-matter claimed. This lack of credibility leads to a gap in the chain of reasoning of the ED, the gap then leading the board not to be persuaded by the case of the division.

[5] The board does not disagree with the case of the appellant on inventive step and is therefore satisfied that the subject matter of independent claims 1 to 3 can be considered to involve an inventive step.

[6] In view of the foregoing and since the board sees no other bar to grant of a patent, the board considers it appropriate to exercise powers within the competence of the first instance and order grant of a patent (A 111(1)).

NB: T 1157/06 is another relevant decision on this issue; a partial translation is available here.

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T 418/07 – Nonchalance

The opponent filed an appeal after the Opposition Division had rejected the opposition.

The decision is interesting because the patent proprietor had some rather unusual requests related to the oral proceedings (OPs) to be held before the Board:

Multiple representatives

[2] On 4 April 2011, shortly before the OPs on 4 May 2011, the [patent proprietor] appointed a second firm of representatives as joint representatives in addition to the firm already acting and asked the board to send copies of all correspondence to both firms […]. After the board gave a negative answer to that request in its communication of 12 April 2011, the [patent proprietor] repeated the request in a subsequent letter of 14 April 2011 […].

[3] While it is open to a party to appoint as many representatives as it may wish, the board is not aware of any requirement on it or on other parties to send correspondence to more than one representative of one party. If a party wants to retain multiple representatives, it must make its own arrangements for copying correspondence to them all. Parties cannot expect the board to provide copying services for their convenience.

Provision of translation in OPs

[4] The [patent proprietor] announced in its letter of 4 April 2011 that it would use German at the OPs and requested the board to provide translation from German into English for the benefit of the [opponent] and of one of its own employees who would attend the OPs and who does not speak German […].

[5] It is a right of any party to use any one of the three official languages in EPO proceedings, but the right to translation from either of the two other languages is circumscribed by R 4. It is clear from R 4(1) and (5) that a party who gives at least one month’s prior notice is free to use an official language other than the language of the proceedings and that interpretation must then be provided by the EPO.

[6] However, such interpretation is quite manifestly only for the benefit of other parties not using the same language who would otherwise be at a disadvantage. In the present case that might have included the [opponent] had it not decided not to attend the OPs but then it would clearly have been he, and not the [patent proprietor], who was responsible for requesting free translation at least one month before the date of the OPs (see R 4(1)). In the board’s view it is equally clear that a party which elects to use a language which is not understood by one of its own representatives or employees cannot for that reason request a free translation. The board cannot provide translation merely to suit the convenience of a party.

Requests for decisions in advance of OPs

[7] The [patent proprietor] made several attempts to obtain a decision or partial decision from the board before the date of the OPs. In one of its letters of 4 April 2011 it requested the board to indicate whether or not the OPs were necessary and also requested the board to inform it whether or not it intended to admit the documents whose admissibility the [patent proprietor] had challenged […]. This would have required the board to decide those admissibility issues before the OPs. In its letter of 21 April 2011, it limited its request for OPs so as only to be effective if its main request was not granted. Again this would have required the board to decide the main request before the OPs.

[8] The [patent proprietor’s] objective seems to have been the quite understandable one of avoiding or reducing the costs of attending the OPs. However, even if only one party makes or maintains a request for OPs, the board cannot make any decision before the OPs. The purpose of OPs being to hear the parties before making a decision, any decision or part-decision in advance of the OPs could deny a party the right to be heard, assist one party to the prejudice of another, and compromise the board’s duty of impartiality (see A 113(1) and decision R 11/08 [14]). If avoidable costs are a concern to a party, its remedy is to request not a premature decision but an apportionment of costs.

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T 584/09 – Never Mind The Translation

The opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form.

The decision contains an interesting paragraph dealing with the novelty of claim 5 of auxiliary request 5, which read (in English translation):

Moulded article (Formkörper) for the non-systemic control of parasitic insects on animals, comprising imidacloprid in a mixture with synergists or other active compounds.

*** Translation of the German original ***

[6.3] Claim 5 of auxiliary request 1 is directed to a moulded article (Formkörper) comprising imidacloprid for the non-systemic control of parasitic insects on animals.

Examples 1 and 10 of document D13 discloses wool, woollen yarn or a sheet-like structure of wool which have been treated with a dye solution containing imidacloprid in order to protect the dyed material against being eaten by moths and beetles.

[6.3.1] In its argumentation regarding lack of novelty, the [opponent] referred to the English translation of claim 5 where the term Formkörper was translated by “shaped article”. A sheet-like structure of wool such as the one disclosed in document D13 was a “shaped article”. Moreover, this sheet-like structure was impregnated with imidacloprid as well as another insecticide, the quantities of which were sufficient for non-systemic control of parasitic insects. Therefore, it was suitable for the use referred to in claim 5, irrespective of whether such a use had been disclosed.

[6.3.2] First of all it has to be noted that pursuant to A 70(1), it is the German language that is relevant because it is the language of the proceedings. Therefore, when assessing novelty, one has to consider the meaning of the German term Formkörper and not what might be encompassed by “shaped article” as used in English.

The technical expression Formkörper does not simply refer to a three-dimensional object, i.e. an article having a certain shape, but designates a particular object that has been produced in a particular way, i.e. from moulding compounds (Formmassen). The latter are liquid, paste-like compounds, in particular synthetic materials, which can be moulded by non-cutting moulding (e.g. injection moulding, extrusion, compression) into moulded articles. Wool, woollen yarns and sheet-like structures of wool such as those disclosed in document D13 are not encompassed by this term.

For this reason alone document D13 cannot anticipate the subject-matter of claim 5.

[6.3.3] During the oral proceedings the [opponent] also argued that the fumigating coils mentioned in document D8 were encompassed by the expression “shaped article”. Moreover, this document also mentioned impregnated natural and synthetic materials. The materials cellulose and starch mentioned in paragraphs [0053] and [0079] of the opposed patent were encompassed by those expressions.

[6.3.4] However, the expressions “synthetic and natural materials” in document D8 and “moulded article” (Formkörper) are not equivalent at all. For example, materials made from wool, paper or leather are encompassed by the expression “natural and synthetic materials” but do not qualify as “moulded articles” […]. Also, the fact that according to the opposed patent both cellulose and starch qualify for the production of moulded articles does not mean that, conversely, that the impregnated materials mentioned in document D8 necessarily are moulded articles. The same holds true for the fumigating coils mentioned in document D8. This document does not explain from which materials and how they were made, nor has the [opponent] provided proof that they necessarily are or have to be moulded articles within the above meaning.

[6.4] Therefore, the Board comes to the conclusion that claims 1 and 5 of auxiliary request 1 are novel within the meaning of A 54.

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T 1001/07 – Anointed Yet Doomed

This appeal deals with the refusal of an application by the Examining Division (ED).

Claim 1 of the application as filed read:

1. Pharmaceutical ointment for use in the therapy of dermatologic diseases consisting of Vaseline, Hydrochloric Acid solution 37%, Boric Acid, and Oil of Black Cedar in the following proportions:

- 1000 gr of Vaseline used as an excipient;

- 100-150 ml of Hydrochloric Acid solution 37%;

- 30 gr of Boric Acid;

- 30 gr Oil of Black Cedar.

The ED refused the application because claim 1 did not comply with the requirements of A 83 and A 84. The term “Black Cedar” could be understood as three different unrelated plant species which resulted in the fact that the subject-matter of the claim was not clearly defined (A 84) and not disclosed in the application in a manner sufficient for a skilled person to put it into practice (A 83).

Together with the notice of appeal, the applicant submitted a new set of claims. Claim 1 of this set of claims read:

1. Pharmaceutical ointment for use in the therapy of dermatologic diseases consisting of Vaseline, Hydrochloric Acid solution 37%, Boric Acid, and Oil CADE in the following proportions:

- 1000 gr of Vaseline used as an excipient;

- 100-150ml of Hydrochloric Acid solution 37%;

- 30 gr of Boric Acid;

- 30gr Oil CADE (oil of Juniperus Oxycedrus).

In what follows the Board deals with the question of whether this amendment complies with A 123(2):

[4] A 123(2) requires that the application shall not be amended so as to contain subject-matter which extends beyond the content of the application as filed.

[5] The present claim 1 refers first to “Oil CADE” and subsequently to “Oil CADE (oil of Juniperus Oxycedrus)” instead of to “Oil of Black Cedar” on both occasions in the claim as originally filed.

[6] There is no explicit basis in the application as filed for either of the expressions “Oil CADE” or "oil of Juniperus Oxycedrus". Based on evidence contained in documents D1 to D3, the ED found, in the decision under appeal in the context of the assessment of compliance with A 83 and A 84, that the term “Black Cedar” was not an accepted common denomination for any particular plant species. In fact, it established that document D1 referred to Black Cedar in its scientific denomination as being Thuja occidentalis Nigra, document D2 as being Nectandra pisi, whereas according to the priority document for the application Black Cedar was equivalent to CADE, which according to document D3 corresponded to Juniperus oxycedrus.

[7] In accordance with established case law of the boards of appeal, the relevant question to be decided in assessing whether an amendment adds subject-matter extending beyond the content of the application as filed is whether the proposed amendment is “directly and unambiguously” derivable from the application as filed (see Case Law of the Boards of Appeal of the European Patent Office, 6th Edition 2010, III.A.7).

[8] In view of the above finding by the ED, and contrary to the argument of the appellant that the term “Black Cedar” is synonymous with either of the terms CADE or Juniperus oxycedrus, there exists no unambiguous technical correspondence for these terms in the relevant technical field. The board therefore necessarily concludes that neither “Oil CADE” or “Juniperus Oxycedrus” is directly and unambiguously derivable from the application as filed.

[9] The appellant has argued that oil of black cedar (oil cade) was found “in the market” where the appellant bought it for the preparation of the ointment (document De) and could there also be found as Juniperus oxycedrus – oil cade. Document (De), a certificate of analysis dated 2 June 2006 for a certain batch of “cade oil” ordered by a person different from the appellant, has been filed in this context.

[10] It is accepted in the case law of the boards of appeal that a disclosure implicit in the patent application, i.e. what the person skilled in the art would consider necessarily implied by the patent application as a whole, is also relevant when assessing the requirements of A 123(2). For an overview of the case law relating to the definition of the notion “skilled person” the board refers to the publication "Case Law of the Boards of Appeal of the EPO", 6th Edition, 2010, chapter I.D.7.

[11] The board accepts that it may well be that for the production of her ointment the appellant has in fact always used oil derived from the species Juniperus oxycedrus. Nevertheless, in view of the finding in point [8], above, it cannot be accepted by the board that this establishes that it would be considered necessarily implied by the skilled person that the patent application equates Black Cedar with Cade or Juniperus oxycedrus. Accordingly, this argument must fail.

[12] The appellant has furthermore referred to the Greek patent application 20030100419 which was filed on 15 October 2003 and from which the present application claims priority. The appellant argued that the claims of this application had been amended before the Greek patent office on 4 December 2003. These amendments had however not been attached by the Greek Office to the priority certificate provided to the EPO. The pharmaceutical ointment comprising oil of black cedar (oil cade) disclosed in the Greek priority application filed on 15 October 2003 was the same as the ointment disclosed in the present European patent application. The omission of the term "oil cade" in the European application was due to the translator who translated only the first term appearing in claim 1 of the Greek priority application.

Claim 1 of the Greek priority document (as filed)

[13] Also in the context of this argument, the board emphasises that the relevant reference point for assessing the compliance of amendments with the requirements of A 123(2) is the application as filed. It notes that neither of the documents representing the European application, be it in the Greek language or the English language, refers to oil CADE but instead refers to oil of Black Cedar, although it is true that the priority document as filed in the Greek language makes reference to oil CADE (see e.g. example 2 and claim 1).

However, it has been established in the case law of the boards that “the content of the application as filed” as referred to in A 123(2) does not include any priority documents (see e.g. decision T 260/85). Such document can therefore not be taken into account when assessing compliance of claimed subject-matter with the requirements of A 123(2). Also this argument must therefore fail.

[14] Accordingly and in view of the above considerations the board decides that claim 1 does not meet the requirements of A 123(2). […]

The appeal is dismissed.

Dura lex (casus) sed lex. 

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

T 41/09 – Dangerous Savings

The present decision deals with an appeal against the decision of the opposition division (OD) to revoke a European patent owned by a Spanish company.

The Dutch representative filed the notice of appeal in Dutch, with an attached translation in English. The reduced appeal fee was paid on the same day.

The Board expressed its preliminary opinion that the notice of appeal filed in Dutch by a legal entity having its principal place of business in Spain was not in compliance with A 14(4) and that it intended to deem the appeal as not having been filed.

The patent proprietor challenged the Board’s preliminary opinion along the following lines:

(a) To the notice of appeal in Dutch, dated 19 December 2008, was attached the same letter in English, which has to be considered by itself as the notice of appeal in the official language of the proceedings.

(b) The principle of equity underlying R 6(3), which Rule aims at providing a positive compensation to applicants and parties from a Contracting State not having an official EPO language, as interpreted in decision G 6/91 [17], should allow for a remedy.

(c) A warning from the EPO was legitimately expected by the appellant. Since the EPO was aware of the patent proprietor’s nationality, the language deficiency associated with the notice of appeal was readily identifiable and a timely warning from the EPO would have offered the patent proprietor the possibility to correct it in due time.

(d) By payment of the reduced appeal fee, only 20% of that fee were missing, which should be considered as a small amount lacking in the meaning of Article 8(1) RRF.

The patent proprietor also requested re-establishment of rights under A 122. It asserted an isolated clerical mistake having been made by the administrative department of its professional representative in the exceptional circumstances of exceptional work pressure since a colleague had left the administrative department and because the testing phase of a new digital document management system was being executed. Having signed the notice of appeal in Dutch, the professional representative had noticed the error and signed a corrected document in English. However, his assistant, in the above-mentioned context, placed the wrong document in an envelope and sent it out. When checking the file, the head of the department of portfolio assistants noticed the copy of the letter in English in the file and as a consequence removed the pending deadline from the monitoring system. This was a one-time error in a well-functioning system of monitoring time-limits and performing cross-checks, i.e. despite all due care. A new notice of appeal, also dated 6 July 2009, accompanied the request for re-establishment of rights.

Notice of appeal in Dutch

[2.1] It is not challenged by the appellant that under A 14(4) the notice of appeal filed in Dutch is in a non admissible non-EPO official language for a patent proprietor having its principal place of business in Spain. The residence or principal place of business of the professional representative used is of no relevance in that matter (T 149/85 [6]). Therefore, in accordance with A 108, the corresponding appeal is deemed not to have been filed.

Translation in English

[2.2] The letter in English, also dated 19 December 2008, expressly indicates that it is “a translation of the notice of appeal” of the same date filed in Dutch. Therefore, its legal effect depends on said notice of appeal filed in Dutch and it cannot be considered as such to be the proper notice of appeal. The Board is of the opinion that G 6/91 [10] and T 1152/05 [2.4-6] have to be followed in the present case. These decisions indicate in the clearest possible way that a “translation cannot become the original”.

G 6/91 [12], cited by the appellant, is directed to the question of a possible confusion between the “translation” and the original document, when the “translation” is filed earlier than the original. The present case clearly distinguishes itself from such a situation, since the translation was expressly qualified as such, making absent any possible confusion, and filed together with the original notice of appeal. Therefore, in the present case, the Board does not see point [12] as more relevant than point [10], nor even simply relevant.

The appellant also points out that the facts of the case having led the referral to the Enlarged Board of Appeal in G 6/91 are different to the ones of T 1152/05 and of the present case. The Board sees G 6/91 [10] as a legal analysis the conclusions of which not being restricted in any way to the specific facts of the case referred.

The appellant finally refers to the difference in legal consequences between T 1152/05, where only the appeal of the patent proprietor was deemed not to have been filed but the appeal proceedings were in any case continued on the basis of the opponent’s appeal, and the present case, where a complete loss of rights would result from the patent proprietor’s appeal being deemed not to have been filed.

First of all, the Board sees no legal basis for a possible distinction in applying the relevant A 14(4) on the basis of the possible legal consequences. Further, the legal consequence of the appeal being deemed not to have been filed is the same in both cases, i.e. the loss for the party concerned of the right to be an appellant and to challenge in its favour the impugned decision.

Principle of equity underlying R 6(3)

[2.3] The appellant supports that the “principle of equity underlying R 6(3)” should allow for a remedy in the present case.

The Board cannot see in R 6(3) a “principle of equity” to be broadly applied. G 6/91 [17] only refers to R 6(3)’s aim of equity in interpreting that provision. Further, R 6(3) is the implementing rule to A 14(4) and explicitly restricts its scope of application to the natural or legal persons referred to in said article, i.e. those having filed an appeal in a language admitted by that provision.

In the present case, on the contrary, Dutch is not a language to be admitted for the filing of an appeal by a patent proprietor having its principal place of business in Spain. Therefore, neither A 14(4) nor the specific content of its implementing R 6(3) can find any application in the present case.

Legitimate expectations

[2.4] The appellant further argues that the EPO should have warned it, for correction in due time, of the impending loss of rights following from the easily identifiable deficiency of using a non-admissible non-EPO language in its notice of appeal. It cites J 13/90 [9], stating that if, contrary to the principle of good faith, the EPO fails to draw the applicant’s attention to a deficiency, it cannot claim that a loss of rights has ensued if the deficiency is later corrected.

The principle of protection of legitimate expectations, or of good faith, is effectively recognised by the case-law of the Boards of Appeal. However, this principle does not impose any obligation on a Board to notify an appellant if there is no indication in the notice of appeal or in any other document filed in relation to the appeal from which it could be inferred that the lack of such notification would result in a loss of rights for the appellant (G 2/97 [order]). There is no obligation on a Board to warn a party of deficiencies within the area of the party’s own responsibility. To take the principle of good faith that far would imply, in practice, that the Boards of Appeal would have to systematically assume the responsibilities of the parties to proceedings before them, a proposition for which there is no legal justification in the EPC, nor in general principles of law (G 2/97 [4.2]).

This distinguishes the facts of the cited J 13/90 from the situation of the present case. In this decision, the deficiency was further readily apparent from the request itself whereas in the present case it is not readily apparent from the notice of appeal, only referring to the name of the appellant, without any indication of the location of its principal place of business. The Board therefore sees in the present case no breach of the legitimate expectations of the appellant.

[2.5] In view of the above, the Board concludes that the appeal of the patent proprietor, on the basis of both its letters dated 19 December 2008, is deemed not to have been filed under A 14(4) in accordance with A 108. The payment of the respective appeal fee has, as a consequence, no legal basis and is to be reimbursed.

Small amount of fee lacking

[2.6] The appeal being deemed not to have been filed, there is no need for the Board to examine whether or not the missing 20% of the appeal fee should be considered as a small amount lacking in the meaning of Article 8(1) RRF. In any case, even following the appellant’s position that the English translation should be considered as the notice of appeal, the Board would follow the reasoning of T 905/90 […], i.e. the missing 20% of the appeal fee could not be considered a small amount lacking, with the same outcome that the appeal would be deemed not to have been filed.

Request for re-establishment of rights

[3] The appellant asserts an isolated clerical mistake having been made by the administrative department of its professional representative in the exceptional circumstances of exceptional work pressure since a colleague had left the administrative department and because the testing phase of a new digital document management system was being executed.

A 122(1) requires for a re-establishment of rights to the patent proprietor that he demonstrates having missed the time limit despite all due care having been taken as required by the circumstances. According to the established case-law of the Boards of Appeal, due care is considered to have been taken if the non-compliance with the time limit results either from exceptional circumstances or from an isolated mistake within a normally satisfactory system, in particular a proper organisation of administrative procedures.

In the present case, the error has been made by the assistant of the professional representative, who prepared a notice of appeal in Dutch language for a patent proprietor having its principal place of business in Spain, and by the professional representative who signed that document. Although having been noticed by the professional representative after his signature, the error has not been effectively corrected.

[3.1] An excessive work pressure is usually not recognised as an exceptional circumstance. It is part of the representative’s organisational duty in exercising all due care to make contingency arrangements to ensure that all professional duties are fulfilled and that office services are maintained (Singer/Stauder, The European Patent Convention A Commentary, third edition, Article 122, marginal number 95).

As concerns the fact that a colleague had left the administrative department, it is not demonstrated among others how recent that was or whether it was unexpected, nor which measures had been taken to compensate for that absence and to ensure correct functioning of the administrative department nor the causal relation between the absence of that person and the problem at issue.

The installation of a new computer system is also not an exceptional circumstance, the resulting burden on employees has to be considered as foreseeable and containable, had appropriates measures been taken in good time (T 489/04 [5]). This seems to apply by analogy to the testing phase of the new digital document management system of the present case.

[3.2] Since the Board in the present case does not see exceptional circumstances, it has to consider if an isolated mistake occurred within a normally satisfactory system. From the general description given by the appellant, it appears that it was the intention of the professional representative’s firm to have a system of monitoring and checking in place, able to detect and to correct errors.

In the present case, the error has been noticed by the professional representative after signature of the wrong document. However, even after signature of a new corrected document, the wrong document has not been shredded or at least definitively isolated from the file. On the contrary, it has been placed by his assistant in an envelope and sent out. Further, when placing the documents back in the file, the assistant did not see that the corrected document had not been sent out but was still present as an original in the file. When checking the file for removing the deadline from the management system, also the head of the department of portfolio assistants did not notice that the original to be sent out was still in the file, with the copy of the corrected letter, and therefore did not perform an effective check. The deadline was then removed on the basis of a document which had not been sent. In the circumstances of this case, the assistants of the professional representative had to be aware of the particular importance of the notice of appeal to be filed in the correct language, of the absolute criticality of the error detected by the professional representative and of its possible fatal consequences for the appeal and for the patent at issue. That should have justified a particular attention to the document to be sent out. From the above and in particular from the cascade of failures to effectively correct the error detected, the Board considers that the present situation does not result from an isolated mistake in a normally satisfactory system.

The Board is as a consequence of the opinion that the appellant has not demonstrated to have taken all due care in the specific circumstances of the present case. Therefore, the Board considers that the request for reestablishment of rights has to be refused.

Second notice of appeal

[4] Since the Board refuses the request for reestablishment of rights, the notice of appeal dated and filed on 6 July 2009, i.e. more than two months after the notification of the impugned decision, does not comply with A 108 and is therefore deemed not to have been filed. As a consequence the payment of the corresponding appeal fee, requested by letter dated 6 July 2009 to be debited from the appellant’s account lacks legal basis and is as a consequence also to be reimbursed. […]

The appeals are deemed not to have been filed.

Should you wish to download the whole decision, just click here.

NB: This decision has already been reported on Laurent Teyssèdre’s blog. I much like the (dare I say, tongue-in-cheek) illustration he chose.

A Word On Translations

As you will know, most but not all decisions of the Boards of appeal are given in English. Some of them are given in German, relatively few in French. Only very few decisions (i.e. those found worthy of being published in the Official Journal) are translated into the other official languages of the EPO.

Nevertheless, on this blog, all the extracts cited are in English. This is because I translate the relevant passages of German or French decisions, so as to bring them within the reach of a greater number of readers.

It now occurred to me that I should state this clearly so as to avoid any misunderstanding. The translations given here are in no way official or approved by the EPO. They are just a courtesy service I provide to the readers of this blog.

As I am not a professional translator, I cannot guarantee the exactness of the translations, and even if a were a perfect professional, I would still have to face the traduttore traditore problem. If ever you have to rely on a decision the translation of which you found on this blog, and if you cannot cope with the original, please have the translation checked.

I do my best but sometimes I might get things wrong.

G 1/07 – Administrators Going Ultra Vires?

There is one last point of G 1/07 which I wanted to mention. As it is of rather academic interest, I have kept it for the weekend.

The Enlarged Board (EBA) offers a look into the cuisine behind the revision of the EPC. As a matter of fact, the EPC 2000 as it entered into force in December 2007 was not a pure product of the Diplomatic Conference held in 2000. The Conference empowered the Administrative Council (AC) to amend the Convention in order to harmonize the three language versions. The AC has abundantly made use of this power. Of course, there are some legal risks associated.

The present referral was made before the entry into force of EPC 2000. According to Article 7(1) of the Act revising the EPC of 5 October 1973, last revised on 17 December 1991, the “revised version of the Convention shall apply to al1 European patent applications filed after its entry into force .... It shall not apply to ... European patent applications pending at that time, unless otherwise decided by the AC of the European Patent Organisation”. Since A 112 is not mentioned in Article 1 of the decision of the AC of 28 June 2001 on the transitional provisions under Article 7 as a provision which would thereby apply to European patent applications pending at the time of entry into force of the revised EPC, A 112 EPC 1973 continues to apply to European patent applications pending upon entry into force of the revised Convention. Hence, the admissibility of the present referral is to be determined on the basis of A 112 EPC 1973.

This is also justified for reasons of legal certainty, which require that it be possible to determine the admissibility of a procedural act at the point in time when it is performed. This includes that it is the law applicable at that time which should apply (see also J 10/07 [1], T 1366/04 [1.2])

A 112, although not having been amended in the revision process, was amended later by the AC, making use of the power entrusted to it under Article 3(1) of the Act revising the EPC to draw up a new text of the EPC, in which the wording of the provisions of the Convention shall be aligned, if necessary, in the three official languages.

Article 3(1) : The AC of the European Patent Organisation is hereby authorised to draw up, at the proposal of the President of the EPO, a new text of the EPC. In the new text, the wording of the provisions of the Convention shall be aligned, where necessary, in the three official languages. The provisions of the Convention may also be renumbered consecutively and the references to other provisions of the Convention may be amended in accordance with the new numbering.

As regards A 112, this “alignment” has resulted in the English version of A 112(1) having been amended from reading “if an important point of law arises” to “if a point of law of fundamental importance arises”.

It does not appear a priori evident that this “alignment” of the English text is not associated with any change in the overall meaning to be given to A 112(1), even when taking into account the equally authentic French and German texts of that Article, in accordance with A 177(1) EPC 1973.

Hence, it cannot be said to be totally irrelevant from the outset whether the old or the new version of A 112 applies. Therefore the Enlarged Board will examine the admissibility of the present referral on the basis of A 112 EPC 1973. [1.1]

When first reading this paragraph, I had the impression that the EBA felt uneasy about the amendment of A 112 by the AC. Others have had the same impression, as can be seen from an anonymous comment to an IPKat post on G 1/07.

Having had a closer look, I do not find the “alignment” of the text open to criticism. As far as the first sentence of A 112(1) is concerned, both the French and the German text of the EPC have remained unamended:

Afin d’assurer une application uniforme du droit ou si une question de droit d’importance fondamentale se pose …

Zur Sicherung einer einheitlichen Rechtsanwendung oder wenn sich eine Rechtsfrage von grundsätzlicher Bedeutung stellt, …

Only the English text has been aligned:

In order to ensure uniform application of the law, or if an important point of law arises …

has become:

In order to ensure uniform application of the law, or if a point of law of fundamental importance arises …

It is obvious that the new text is now well aligned with the French and German versions, which was the purpose of the power entrusted to the AC. Therefore I would say that the AC has not gone too far. But perhaps the EBA did not even wish to suggest that it has.

Be that as it may, this raises an interesting (but admittedly academic) question: what could be done if the AC had gone ultra vires and changed the meaning of an EPC provision and a user of the EPO felt adversely affected by the amendment? As far as I can see, there is no legal remedy available. Only a Diplomatic Conference could repair the damage done, by amending the provision once more.

To download the decision, just click here.

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.