EPO – G 04/08 Enlarged Board / Language of Proceedings

Posted: February 19th, 2010

EPO, Enlarged Board of Appeal, 16 February 2010, Decision No. G 04/08

If an international PCT application has been filed and published in one of the official EPO languages, it is not possible to (upon entry into the European phase) file a translation of the application in one of the two other languages. The EPO bodies may not use themselves in the written procedure one of the official EPO languages other than the official language that was used for the application (Art. 14(3) EPC).

Read the decision (in French) here.

Read a summary in English (provided by Bardehle Pagenberg) here.

3 Responses

  1. Leo Steenbeek says:

    The EBA decision did not touch the right of parties to use any EPO language for arguments submitted to the EPO in written or oral form; only amendments need to be submitted in the language of the proceedings.
    Neither did the EBA decision touch the right of the applicant to pick any EPO language as language of the proceedings by either filing the application in the desired EPO language, or when the application was filed in a non-EPO language, filing a translation into the desired EPO language.
    The EBA decision mainly says that once the applicant has thus picked the language of the proceedings, he cannot change it e.g. by filing a translation into another EPO language. Also, the EPO has to use the language of the proceedings thus picked by the applicant.
    The EBA has confirmed that a PCT application is equivalent to an EP patent application if the EPO is a designated office (which condition is always fulfilled as all PCT applications designate the EPC states with an indication that an EP patent is sought, see Rule 4.9 PCT). So, a PCT application does not become an EP application only upon entry into the national phase. In view thereof, it does not make sense to allow an applicant to file a translation upon national phase entry if the PCT application was already filed into an EPO language.
    This equivalence between a PCT application and an EP application makes me wonder about the correctness of the EPO practice to only allow the filing of a divisional based on a PCT application once EP national phase fees have been paid and any necessary translation has been filed for the PCT application, as payment of fees and any necessary filing of a translation for a direct EP parent application are not preconditions for being able to file a divisional application based on that direct EP application.

    • RyutaroMashiko says:

      Had a big long rant in my head, this is the short version: the Administrative Council are a bunch of utter mupptes clearly living in a complete vacuum separate from all reality of prosecuting patent applications. At 30/31 months from the priority date, the applicant is spending vast sums of time and money working out which countries they want to bring their PCT application into. The last thing they need is to be forced to spend more time and money worrying about draconian time limits imposed by the EPO.There was no need to introduce a new procedure to deal with this perceived problem. All that was necessary was that the EPO get their fingers out their orifices and issue a first examination report immediately an ex-PCT application enters the EP phase with the words “observations raised in the written opinion result in objections under the corresponding provisions of the EPC”. Typically, the EPO take three years to get such a report out at the moment.Then, the good old friendly examination procedure that everyone knows about and knows whether the deadlines are extendable and further processable and 10-day-able would happen exactly as it did before, just a little bit sooner.The same goes for the new Rule 70a and the enforced response to the search opinion at a time when the applicant is worrying about whether or not to pay the examination fee. The current procedure has only been in place a couple of years and seems to be working very well and very quickly – no need whatsoever for a new procedure to confuse everyone.Like I say, Administrative council: mupptes, the lot of you. Try simplifying the rules not making them more complicated if you want a smoothly running office.

  2. Prabhat says:

    I am afraid that the IPKat has miptetersrnied the words “If the European Patent Office has acted as the International Searching Authority and, where a demand under Article 31 PCT was filed, also as the International Preliminary Examining Authority”: this “where” means “if”, so that the new mandatory response to the PCT written opinion also needs to be filed if the EPO has only acted as ISA. See also the other authentic texts of the new Rule, viz. “Ist das Europe4ische Patentamt ffcr eine Euro-PCT-Anmeldung als Internationale Recherchenbehf6rde und, wenn ein Antrag nach Artikel 31 PCT gestellt wurde, auch als mit der internationalen vorle4ufigen Prfcfung beauftragte Behf6rde te4tig gewesen” and “Si l’Office europe9en des brevets a agi en qualite9 d’administration charge9e de la recherche internationale et, lorsqu’une demande d’examen pre9liminaire international a e9te9 de9pose9e au titre de l’article 31 PCT, d’administration charge9e de l’examen pre9liminaire international pour une demande euro-PCT”.As EPI has informed its members by email, in view of the PCT time line, the entry into force of this new Rule 161 in April 2010 means that it applies to PCT search reports and written opinions that are received now, so that EP attorneys are well advised to (seek instructions to) prepare a response as soon as the PCT report is received as the short one month time limit of 1 month in Rule 161 does not allow to only start preparing a response once the Rule 161 communication is received. Also, EP attorneys in private practice should advice their foreign clients and associates that new instructions for EP national phase entry need to be acoompanied by instructions for response to the PCT report, as the short one month time limit of Rule 161 does not allow to only start preparing such a response when the Rule 161 communication is received.

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