T 0265/11 - Basis in the application and translation

T 265/11 - [C]

For the decision, click here. 

Key points

• The opponent argued that the patent extends beyond the content of the application as filed (the PCT text in Japanese) because of an error in the translation as filed upon entry of the European phase. However, the opponent did not provide evidence that the translation contained an error and the Board assumes that the translation is in conformity with the original text, in accordance with Rule 7 EPC.
  
  
• Rule 7 - Legal authenticity of the translation of the European patent application 
Saving proof to the contrary, the European Patent Office may, for the purposes of determining whether the subject-matter of the European patent application or European patent extends beyond the content of the European patent application as filed, assume that the translation referred to in Article 14, paragraph 2, is in conformity with the original text of the application.

Summary of Facts and Submissions

I. The appeal concerns the interlocutory decision of the Opposition Division of the European Patent Office posted on 25 November 2010 concerning maintenance of European Patent No. 1403832 in amended form.

II. The appellant (opponent) requested that the decision under appeal be set aside and that the patent be revoked. Further, the appellant requested that a translation of the original claims into English filed by the appellant with letter dated 15 September 2015 be used for determining whether the subject-matter of the European patent application extends beyond the content of the application as filed.

Reasons for the Decision

1. The appeal is admissible.

2. Request for replacement of the translation of the claims

With letter dated 15 September 2015 the appellant [opponent] filed an uncertified translation of the claims of international application PCT/JP01/05835, which is the original text of the application on which the patent is based. The appellant argued that features b), c), d1) and e1) were different in the originally filed claims with respect to the English translation filed under Article 158(2) EPC 1973 and published.

The appellant requested that the content of the uncertified translation of the claims be used as a basis for the analysis according to Article 123(2) EPC.

According to Article 150(3) EPC 1973 (now Article 153(2) EPC) an international application for which the European Patent Office is a designated or elected Office, and which has been accorded an international date of filing, shall be equivalent to a regular European application. PCT/JP01/05835, for which the European Patent Office is an elected Office, has been accorded an international date of filing of 4 July 2001. Therefore, Rule 7 EPC 1973 (corresponding to Rule 7 EPC) applies mutatis mutandis to the translation of PCT/JP01/05835 filed under Article 158(2) EPC 1973.

No evidence was provided that the translation filed under Article 158(2) EPC 1973 is not in conformity with the original text of the application. Thus, in accordance with Rule 7 EPC 1973, the board assumes that the translation on file is in conformity with the original text of the application for determining whether the subject matter of the European patent extends beyond the content of the application as filed.

Further in this respect, the appellant requested that the case be remitted to the department of first instance, or that the proceedings before the board be adjourned. The appellant provided however no explanation why it could not have presented its objections to the translation on file at an earlier stage, accompanied by proper evidence, e.g. in the form of a certified translation. The respondent requested that the request for remittal or adjournment be rejected.

Since no evidence to the contrary in the sense of Rule 7 EPC was provided proving a non-conformity of the translation on file, and since the request for remittal or adjournment was filed very late, i.e. during the oral proceedings before the board, the request for remittal or adjournment is rejected.