T 1332/12 - Filing better machine translation

Key points

• In this opposition appeal, the OD had found the claims to lack inventive step over D7, a JP patent application into English. The OD cited D7T, a machine translation. In appeal, the patentee submits (after the Statement of grounds) D7JPO, a newer machine translation of D7. 
• The Board discusses admissibility of D7JPO. "There is nothing in the EPC to prevent a party from filing a corrected translation of a document filed as evidence, even if the evidence and/or translation was filed by the other party to the proceedings." 

III. The opposition was based on the grounds under Article 100(a) EPC.

The opposition division decided that the subject-matter of claim 1 of the main, first, second and third auxiliary requests lacked inventive step over the disclosure of document D7 (JP 07-131734 A) and the common general knowledge of the person skilled in the art (Articles 56 and 100(a) EPC), and that the subject-matter of claim 1 of the fourth and fifth auxiliary requests extended beyond the disclosure of the application as filed (Article 123(2) EPC). For the analysis of inventive step, the opposition division referred to document D7T, which was a JPO machine translation of document D7 into English.

[...] VI. With a letter dated 12 October 2015, the appellant submitted a different translation of document D7 (D7JPO) because "the Japanese and the original and the previously translated prior art document D7T is not precise in many aspects". The appellant provided additional arguments as to why the subject-matter of claim 1 of the main request and the auxiliary request should be considered to involve an inventive step (Article 56 EPC).

Reasons for the Decision

1. The appeal is admissible.

2. Admission of translation D7JPO into the appeal proceedings (Article 13(1) RPBA)

2.1 The respondent filed a copy of Japanese application D7 (JP 07-131734 A) as evidence of the prior art under Article 54(2) EPC 1973 and a JPO machine translation of that document into English (D7T). In response to the respondent's reply, the appellant filed document D7JPO, which is also a JPO machine translation of document D7 into English, but of a later date and, in the appellant's view, a more accurate translation.

2.2 There is nothing in the EPC to prevent a party from filing a corrected translation of a document filed as evidence, even if the evidence and/or translation was filed by the other party to the proceedings. The board takes the view that this also applies if the document is a patent application, taking into account that, under the EPC, the translation of a European patent application or an international application into an official language of the EPO may generally be brought into conformity with the application as filed (Article 14(2) EPC 1973 regarding European patent applications; decisions T 700/05 and T 1483/10 regarding international applications). Hence, the board considers that the translation into English of Japanese prior-art document D7 may be brought into conformity with the original.

2.3 Moreover, the board concurs with the appellant that the differences between the two translations are minor and result in a linguistic clarification of certain passages in D7T without changing its technical disclosure.

2.4 In view of the above, the board, exercising its discretion under Article 13(1) RPBA, decided to admit translation D7JPO into the appeal proceedings and base the discussions of inventive step on D7, referring to the text of translation D7JPO.