J 0003/21 - Translation does not become original

Key points

• This is an appeal against a decision of the  Receiving Section; the case is anonymised. 
•  "On 29 September 2020, the applicants filed, in the Chinese language, European patent application EP XX XXX XXX.X including an abstract, a description and 25 claims, the latter numbered with Arabic numerals."
• "Alongside the Chinese application documents and the filled-out EPO Form 1001, i.e. still on 29 September 2020, the applicants filed, as a translation of the former, an abstract, a description and 15 claims in the English language, together with seven sheets of drawings with reference signs using Arabic numerals (e.g. "404") and, for each sheet, lettering using the Latin alphabet (e.g. "FIG.1")."
• " In a telephone conversation with the Receiving Section on 9 October 2020, the applicants were informed of the discrepancy between, on the one hand, the number of claims indicated in EPO Form 1001 and as translated (15) and, on the other, the number of claims in the Chinese original application (25). They were also informed of the missing drawings in this application."
• For the claims fees, the easy way out is to file a divisional application which should effectively only incur the filing fee. 
• The status of the drawings is, however, tricky.
• " In the request for grant of a European patent (EPO Form 1001), the applicants were identified, as was the Chinese filing language (box 5.1: "zh"). The number of claims was stated to be "15" (box 29), "as attached" (box 29.1). In the box designated for "Specification in admissible non-EPO language" (box B-1), "Chinese Original.pdf", "15 claims" and "drawing(s)" were indicated. In the two boxes designated for "Translation of specification", respectively "Specification EN.pdf" (box B-3) and "Drawings.PDF" (box B-4) were indicated, "
• The application is still not published (3 years after the filing); at least the decision is published anonymised without a link to the file. 
• The applicant requests, inter alia, " that the English application documents filed on 29 September 2020 be regarded as the application documents, upon abandonment of the Chinese version filed on the same day"
• However, established case law is that a translation does not become the original, as held in G 6/91, point 10 of the reasons,  "a translation cannot become the original; whatever the date on which it is filed it remains a translation, with all ensuing legal consequences", confirmed in T 1152/05 for the case of a Notice of appeal being filed in an inadmissible non-EPO language together with a translation in French (appeal deemed not to have been filed), idem T 0041/09, but see T 1037/11 point 1.20.
• For the drawings, T 0382/94 might be relevant, suggesting that the drawings are part of the application documents. 
• The Legal Board in the present case: "the request addressed in point 2 aimed at correcting at least the description of the originally filed Chinese application by replacement with at least that of the English translation filed on the same day. The ban on such corrections, established in G 2/95 on the basis of Article 123(2) EPC and further developed in e.g. J 5/06 and J 16/13, is categorical and follows from the principle reflected in Rule 40(1)(c) EPC that the accorded filing date is inseparable from the description as originally filed. An exchange of the description by way of correction would directly result in the separation of the filing date from the description in contravention of Article 123(2) EPC. "
• Note, in new Rule 56a(4) EPC, the correct parts are added,  not replaced, hence in full compliance with the letter of  G 2/95. See also the article of Mulder and Van Woudenberg in epi Information 3/2022.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/j210003eu1.html

14. When deciding point 2, which addresses a request that reflects the present first auxiliary request, the Receiving Section did not exceed its competence (Article 16 in conjunction with Rule 10(1) EPC). That is because, effectively, the request addressed in point 2 aimed at correcting at least the description of the originally filed Chinese application by replacement with at least that of the English translation filed on the same day. The ban on such corrections, established in G 2/95 on the basis of Article 123(2) EPC and further developed in e.g. J 5/06 and J 16/13, is categorical and follows from the principle reflected in Rule 40(1)(c) EPC that the accorded filing date is inseparable from the description as originally filed. An exchange of the description by way of correction would directly result in the separation of the filing date from the description in contravention of Article 123(2) EPC. Refusing such a request for correction does not require any technical examination and technical qualifications, and this principle applies irrespective of any intention of the applicant (see e.g. G 2/95, reason 4, order and headnote, J 5/06, reasons 6 and 10, CLBA II.E.1.14.7 and IV.A.5.5.2, Rule 40(1)(c) EPC, and J 16/13, reasons 15 and 18).

15. The observations made above, in points 12 to 14, apply mutatis mutandis to the applicants' further allegations that the fewer claims offered as replacement were merely the result of a bundling of dependent claims, and that the content of the application was unchanged following the resubmission of documents. Also these allegations are unhelpful to the applicants' case.

16. The fact that the particular filing language is Chinese is immaterial to the above assessments.

17. In sum, none of the main request and the first auxiliary request is reason to set aside the appealed parts of the impugned decision.

Second auxiliary request

18. As confirmed by the applicants, the second auxiliary request corresponds to the request addressed under point 3 of the impugned decision which is not appealed.

19. Since the Receiving Section also appears to affirm the corresponding request's allowability, however only so after its decision has become final, i.e. when it is clarified which documents constitute the application and thus the basis for translation, it is questionable whether the applicants are adversely affected by this part of the impugned decision and, thus, whether it is appealable at all (cf. Article 107 EPC).

20. Therefore, the second auxiliary request is not admissible, and also no reason for the Board to set aside the impugned decision.