T 0428/15 - Novelty attack based on machine translation

Key points

• " The [opponent's] objection that D3 anticipates the subject-matter of claim 1 is based on passages of a computer-generated translation whose quality does not allow the Board to understand with a sufficient degree of certainty what is in fact described in D3. 

• Furthermore, the [opponent] did not submit a man-made translation of the relevant passages which would have clarified the issue, or provide technical explanations which would render credible that the true meaning of the vague passages concerning the use of chloroform [...]
   On that basis, the Board can only come to the conclusion that no case has been made that the subject-matter of granted claim 1 lacks novelty over the disclosure of Example 6 of D3." 

EPO T 0428/15 -  link

2.1 The footnote of Table 1 in paragraph [0057] of the translation of D3 defines A1 to be "The preliminary reaction thing of bis-(beta-epithiopropyl)surfide and 2-MINOBENZENthiol (sic)". 

According to paragraph [0049] after addition, mixing and reaction of the reactants "The reaction mixture was dissolved in chloroform, the after-rinsing chloroform layer was dried, the solvent was removed and 101.81 g of 1,9-bis(2-aminophenyl)-3,7-dimercapto 1,5,9-trithianonane which is an object was obtained (95% of yield)." 
It is not clear from that passage whether the expression "The preliminary reaction thing" used in the translation should be understood to refer to the reaction mixture as obtained during the preliminary reaction step described in paragraph [0049] before apparently the mixture is dissolved in chloroform or to the product obtained after all theses additional steps, which also would constitute a reaction product which needs to be first prepared for the formulation described in Table 1 and accordingly could be understood to be the "preliminary reaction thing".

Consequently, the objection that D3 anticipates the subject-matter of claim 1 is based on passages of a computer-generated translation whose quality does not allow the Board to understand with a sufficient degree of certainty what is in fact described in D3. 

Furthermore, the appellant did not submit a man-made translation of the relevant passages which would have clarified the issue, or provide technical explanations which would render credible that the true meaning of the vague passages concerning the use of chloroform and the apparently described rinsing step would be immaterial to the conclusion to be drawn in respect of the nature of product A1 obtained.

[...]
2.4 On that basis, the Board can only come to the conclusion that no case has been made that the subject-matter of granted claim 1 lacks novelty over the disclosure of Example 6 of D3.

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.

T 1585/12 - A123(2) and the description

Key points

• The application was filed in Dutch, and the opponent asserts that the claims involve added subject-matter due to an imprecise translation of a term from the Dutch application as filed. The Board finds the term (as translated) to be unclear, but not to involve added subject-matter. 
• The Board also indicates that for Article 123(2) EPC, in case on unclear terms, the description has to be taken into account. 
• " As follows from above the unclear term "shielder" only derives its full meaning in the light of the description and figures, and therefore cannot have a broader meaning than what can be inferred therefrom." 

EPO T 1585/12 - link


Reasons for the Decision

3. Added subject-matter

3.1 The present application Nr 07075198.7 was originally filed in the Dutch language and subsequently translated into English pursuant to Art. 14(2) EPC.

Pursuant to Art 70(2) EPC the Dutch filing therefore constitutes the authentic text of the application as filed. For the purpose of determining whether the patent extends beyond the application as filed, it should be examined whether the subject-matter of claims 1 and 22 has a basis in the original Dutch application. In particular, does the use of the term "shielders" introduce subject-matter not originally disclosed in the application as filed in Dutch.

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.