T 2652/22 and T 1787/16: Language of proceedings

Key points

• The application was filed in 2006. The patent was granted in 2013. The OD issued its first decision in 2016. The Board set it aside in 2021 in the first appeal. The OD issued its second decision in 2022. The second appeal decision was issued in 2025.
• Actually, the first appeal decision (T 1787/16) is more interesting. The first OD decision included citations of the opponent's submissions (in English), whereas the language of the proceedings was German. The Board found this to be a twofold substantial procedural violation. First, citations of the parties’ arguments cannot replace the reasoning of the OD under Rule 111(2) in the manner that occurred in the case at hand.
• Second, (and obiter, see point 12 of the reasons), the decision should have contained translations of the citations in the language of the procedure, i.e., German. In fact, the EPO may only use the language of the procedure in the written decision, with limited exceptions (e.g., for terms such as 'ex officio', and when citing evidence).
• T 1787/16, in translation: "Therefore, for proceedings under the EPC, too, applying Article 125 EPC and the overall analogy it prescribes, it can be deduced from the procedural principles of the Contracting States that there is only very limited scope for using a language other than the language of the proceedings in the decision, namely only to the extent that it is necessary to answer procedurally relevant questions of fact, evidence, and law. This includes the verbatim quoting of foreign-language documents (both technical and non-technical) and of written and oral statements by witnesses, experts, or parties in the context of the evaluation of evidence, or—generally speaking—in the context of assessing the probative value and content (interpretation) of documents."
• • My analysis is that the Board derived the main principle that a procedure has a single language of procedure, which must be used exclusively unless an exception applies. The liberal regime of  Rule 3(1) EPC ("In written proceedings before the European Patent Office, any party may use any official language of the European Patent Office") is, therefore, an exception and applies only to the parties, not to the EPO.  
• In the current second appeal decision, the Board also finds a procedural violation: the list of cited documents is not included in the decision. However, the Board does not remit the case and examines the patent on the merits.
• Interestingly, the first OD decision was to reject the opposition. In the second decision, the OD, with a different composition, had decided to revoke the patent. The proprietor's appeal is dismissed.

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• EPO 

The link to the decision can be found after the jump.

J 0004/18 - Rule 6

Key points

• In this examination appeal, the applicants are a French and a Dutch natural person. They appeal against the decision to refuse the 30% refund of the appeal fee.
• According to the Examining Division, " Rule 6(7) EPC had to be read in relation to Rule 6(3) and (4) and Article 14(4) EPC. It resulted therefrom that in case of multiple applicants, all applicants must fulfil the requirements of Article 14(4) EPC in order to be entitled to a fee reduction. As one of the applicants had his residence in France, he did not fulfil those requirements." (This is already in the EPO FAQ about Rule 6 (here).
• The Board: "The question to be decided is whether paragraph 7 means that in case of multiple applicants all of them must -as in the present case- be natural persons (a) or that all must be natural persons and must additionally fulfil the requirements of Article 14(4) EPC (b)," 
• The argument of the Examining Division "is based on an erroneous interpretation of Rule 6(4)." 
• "The only thing Rule 6(4) does is to define certain categories of applicants for whom the reduction is available. It does not express any other limiting condition to the fee reduction entitlement as defined in Rule 6(3) EPC. A reference in Rule 6(7) EPC to Rule 6(4) EPC can therefore not refer to anything else then [sic!] the categories for whom the fee reduction is available. In other words, Rule 6(7) cannot by referring to Rule 6(4) EPC change the conditions for entitlement in Rule 6(3) EPC." 
• Clearly, in this case, the amount of the appeal fee is higher than the amount of the refund. The appellants had requested a refund of the appeal fee on the ground of a substantial procedural violation. However, the mistake of the Examining Division was a substantive one. "  It certainly did not fail to apply a clearly defined procedural rule under the EPC, as is required for establishing a procedural violation" 
• " the appeal fee is also not to be reimbursed on the ground that the appealed decision, as the Board has noted in its communication of 19 November 2018, does not state the names of and is not signed by the responsible employees." 
• The Board finds this a substantial procedural violation (agreeing with J16/17). "As the decision at hand was individually reasoned and was not created automatically by a computer, the exceptions under Rule 113(2) EPC do not apply. However the decision under appeal did not bear the names of the members of the examining division. At the end of the decision only the phrase "For the Examining Division" appears, followed by an anonymous EPO-stamp. The decision therefore does not bear the names of the employees that have taken the decision nor their signature and thus does not comply with the requirement of Rule 113(1) EPC. This omission must be classed as a substantial procedural violation, for the reasons cited above." 
• However, reimbursement on this ground would not be equitable, because the appeal was not caused by those formal errors.  "As a matter of fact the issue was not raised by the appellants in their appeal, but by the Board. There is no causal link between the refusal to refund part of the examination fee and the non-compliance with Rule 113(1) EPC." 
• In my view, it is a clear weakness of the EPC that in case the EPO makes a mistake about fees, the appeal fee can be higher than the possible refund. This makes that the EPO first instance practice about fee refunds is in effect outside the scope of review by the Boards. I wonder if the EPO FAQ would also have taken such a clear and applicant unfriendly position (without any clear legal basis) if the matter was not extremely unlikely to be appealed because any appeal would cost the applicant money even if the applicant was right and the EPO was wrong. I would also like to praise the representative of the applicants (Mr. Griebling) to bring the case in appeal; I guess as a matter of principle. 
• Perhaps the fact that Rule 103 EPC is not an exclusive basis for a refund of the appeal fee (see T0613/14) can be used to address this. 

EPO J 0004/18 - J4/18 -  link

T 2109/15 - Interpreter at the oral proceedings

Key points

• In this opposition, appeal cease, the opponent had requested interpretation too late. The opponent hence arranges for interpretation into the language of the proceedings, hence brings an interpreter to the oral proceedings. The patentee objects to the interpreter. According to the patentee, it is not acceptable that the patentee has to rely on the interpreter of the opponent and that the opponent, by not observing the period of Rule 4(1) EPC, can impose an interpreter of its own choice. The representative of the patentee indicated that it could be liable to its client if it loses the case. The patentee, in particular, feared to be disadvantaged if the interpreter were to misrepresent the submissions of the opponent into the language of proceedings (German) used by the patentee. 
• The Board notes that according to Rule 4(1) EPC, a party can arrange for its own interpreter, without further requirements as to the interpreter. There is no legal requirement for approval of the interpreter by the other party. Moreover, the interpreter of the opponent was a professional interpreter often acting before the EPO.
• I suppose that the underlying question is what the relevant submissions of the opponent are: those as spoken by the opponent, or those as the translation? I think, from a legal point of view,  the submissions as translated in the language of the proceedings should be decisive so that a low-quality interpretation is for the risk of the opponent and making the whole point moot. However, in practice, the Board would of course listen to the opponent's submissions (in French in this case).

EPO T 2109/15 -  link

Entscheidungsgründe

1. Die Beschwerden sind zulässig. Dies wurde von den Parteien auch nicht mehr bestritten.

2. Zulässigkeit der von der Beschwerdeführerin II bzw. Einsprechenden besorgten Übersetzer - Antrag auf Vertagung der mündlichen Verhandlung

2.1 Die Beschwerdeführerin I bzw. Patentinhaberin verweigerte zu Beginn der mündlichen Verhandlung ihre Zustimmung zu dem geplanten Übersetzungsprozedere. Nachdem die Parteien mit Mitteilung der Geschäftsstelle vom 20. August 2018 (mit Fax vorab am 16. August 2018 an die Einsprechende gesendet) auf das Fristversäumnis eine Übersetzung zu beantragen hingewiesen worden seien, hätte sich die Einsprechende umgehend mit der Patentinhaberin zur gemeinsamen Auswahl der Übersetzer in Verbindung setzen müssen. Die Einsprechende habe jedoch abgewartet und die Patentinhaberin erst eine Woche vor dem geplanten Termin für die mündliche Verhandlung darüber informiert, dass sie selbst für eine Übersetzung gesorgt habe. Die Übersetzer seien von der Einsprechenden ausgewählt und beauftragt worden und würden von ihr bezahlt. Es gehe nicht an, dass der Kläger sich auf die Dolmetscher des Beklagten verlassen müsse, dass also die Einsprechende - bei Nichtbeachtung der Monatsfrist gemäß Regel 4 (1) EPÜ - ihren eigenen Wunschübersetzer aufzwingen könne. Die Patentinhaberin mache sich gegenüber ihrem Mandanten angreifbar, falls sie das Verfahren verlieren würde. Es sei nicht auszuschließen, dass das rechtliche Gehör der Beschwerdeführerin I in Gefahr sei.

T 0655/13 - Refusal based on Japanese document

EPO Headnote
In order for the examining division to make its reasoning on the basis of a pertinent prior-art document in a non-official EPO language comprehensible to the board, it must provide the translation used in the examination proceedings of at least the relevant sections of the document (or even of the whole document, if this is necessary for its overall understanding) into an official language of the EPO. Otherwise, the board is unable to examine the reasons for the decision, and in certain cases even whether the decision was justified or not, which amounts to a violation of the legal requirement for reasoned decisions under Rule 111(2) EPC

Key points

• In this examination appeal, the refusal was based on lack of inventive step over D1, a journal article in Japanese. For what features of claim 1 are disclosed in D1, the ED only refers to " D1, paragraph 5, page 1925-1926, figures 7, 8" and to the translation of the IPRP.  
• The Board considers this a substantial procedural violation. The headnote is quite clear about the requirement of EPO to provide a translation. 
• More interesting is the Board's holding about whether the ED should cite specific parts of D1 (even in Japanese), or can refer to 2 pages as they did.
• " Furthermore, even if a reference to a specific location within a prior-art document were required to substantiate the disclosure of an individual feature, a general reference to a longer section of this document may exceptionally suffice if the relevant location can be readily identified. This may be the case, for example, if the publication is in one of the EPO's official languages and if the feature in question is reproduced in the same words as in the claim under examination and can therefore be immediately identified in the longer section without any interpretational effort." " The appellants explicitly contested the examining division's general assertion and, as a main line of argument, concluded from the very lack of disclosure of this crucial feature in document D1 that the claimed subject-matter involved an inventive step. It follows that the examining division should have identified a more specific passage in the publication in order to substantiate its assertion that the feature was disclosed in D1." 

EPO T 0655/13 -  link

Reasons for the Decision

1. The appeal complies with the requirements of Articles 106 to 108 and Rule 99 EPC and is therefore admissible.

2. Substantial procedural violation - insufficient reasoning, Rule 111(2) EPC

2.1 In the case at hand, the question of whether the subject-matter of claim 1 of the main request involves an inventive step hinges to a great extent on whether document D1 discloses the feature of switching between different parallax coding modes within one single predictive encoding process ("when the first parameter number is selected, ...; and when the second parameter number is selected, ..."). In their submissions prior to the decision under appeal, the appellants expressly rebutted the examining division's assessment, which also referred to the IPRP, that D1 disclosed this feature.

T 0595/11 - Underpayment and good faith

EPO T 0595/11

For the decision, click here.

EPO Headnote

1. When deciding on the possible consequences of the Office's failure to meet its obligation to check a fee payment, the merely conjectural possibility of a real, but otherwise in itself not necessarily decisive setback (here the non-occurrence of an immediate success) for a party [i.e. the respondent] is more preferable than a certain decisive loss of all rights for another party [the appellant], in particular when for a long time none of the parties expected the latter, see Reasons 1.13

2. Fee payment is not an issue of admissibility of the appeal, but rather a precondition for the very existence of the appeal, i.e. its deemed filing, see Reasons 1.15

Key points

• If the EPO does not note the underpayment of the appeal fee quickly, the underpayment does not result in inadmissibility of the appeal because of the principle of good faith. 
• If a non-entitled person files a Notice of Appeal in the language of a Contracting State other than an EPO language, and the EPO does not note this until late in the appeal, this incorrect language neither affects the appeal, also based on the principle of good faith.
• The remark that fee payment is a precondition for the very existence of the appeal is quite curious in view of pending referral G 1 /14 about that topic. 

Summary of Facts and Submissions

I. The appeal lies from the decision of the opposition division, dated 8 December 2010 and posted on 12 January 2011 to revoke the European patent No. 1 579 759 pursuant to Article 101(3)(b) EPC.

II. The opposition was filed against the patent as a whole and based on Article 100(a) in conjunction with Articles 52(1), 54, and 56, Article 100(b) in conjunction with Article 83, and Article 100(c) in conjunction with Article 123(2) EPC.

The opposition division held that the main request, submitted during the oral proceedings and based on claim 1 as granted, did not meet the requirements of the EPC, for lack of novelty of claim 1. In its decision the division considered the following prior art, amongst others: [...]

III. The appellant proprietor is Lely Enterprises AG, Bützenweg 20, CH-6300 Zug, Switzerland, a legal person registered in Switzerland. They filed a notice of appeal in Dutch on 11 March 2011, with a simultaneously filed English translation. A debit order for the payment of EUR 944 as appeal fee was enclosed with the notice of appeal. The latter stated that the debit order was for a reduced appeal fee under Article 14(4) and Rule 6(3) EPC. The statement of grounds of appeal was submitted on 20 May 2011.