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Saturday, 17 January 2009

English: the language of choice at the EPO?


The IPKat frequently comments on the babylonian nature of the European IP system, in particular the curious fact that many important ECJ judgments and opinions are not made available in English even though that would allow them to be easily read by, the IPKat strongly suspects, 100% of European IP professionals, to whom they are primarily aimed. The situation at the European Patent Office is a little less crazy, since there are only 3 official languages: English, German and French. This sometimes makes life slightly difficult for European patent attorneys but, since EPAs are expected to be fluent in at least one language and have a working knowledge of the others, there should be little to complain about.


The IPKat was therefore very interested, and a bit surprised, to see that a UK firm of patent attorneys have recently been instrumental in having a referral made to the Enlarged Board of Appeal in their attempt to get English, rather than French, accepted as their language of choice in proceedings before the EPO.

As well as accepting applications directly, the EPO acts as a 'designated office' under the international Patent Cooperation Treaty (PCT) system. PCT applications, although managed centrally by the clearing house of the International Bureau of WIPO in Switzerland, can be filed in many different languages and in many different places, because a PCT application can, as well as being filed at the IB itself, be filed at a national patent office acting as a 'receiving office', which then passes on the application to WIPO for processing. This system, a largely cobbled-together affair resulting from many and various compromises among the PCT member states (of which there are now 139), has a few resulting oddities. One of these is that the language in which the application is filed at a receiving office becomes the language in which the application is eventually published, provided this is one of the PCT languages of publication (Rule 48.3 PCT), which include the 3 official languages of the EPO. The usual result is that, once a request for a PCT application published in English, French or German is made to enter the European phase, the language of the proceedings at the EPO will be that language. Two parts of the EPC (using the current EPC2000, rather than EPC1973) make this reasonably clear. Firstly, Article 153(3) EPC states:
"The international publication of a Euro-PCT application in an official language of the European Patent Office shall take the place of the publication of the European patent application and shall be mentioned in the European Patent Bulletin."
Secondly, Article 14(3) EPC states:
"The official language of the European Patent Office in which the European patent application is filed or into which it is translated shall be used as the language of the proceedings in all proceedings before the European Patent Office."
It is generally presumed that the language of the proceedings at the EPO for a PCT application published in English, French or German must therefore be the language of the PCT application. However, a possible chink in the armour is that little phrase highlighted above. Does this leave open the possibility for a PCT application filed and published in, for example, French to be prosecuted in English at the EPO if a translation is filed when the request for entry into the European regional phase is made? This is apparently what the attorneys in the case of J 8/07 are claiming, and the situation is apparently not as clear as might have been previously thought. [Please note that the IPKat is taking the liberty of translating the differently worded requirements of EPC1973 into EPC2000, to avoid further confusion.]

The PCT application in question was filed in French at the French patent office (INPI). INPI, acting as receiving office, only accepts applications in French. After being passed to the International Bureau, the application was then published as WO 02/081621. At the end of the international phase, a request was made by a UK-based attorney to enter the European regional phase. The attorney performed all the necessary steps to enter the regional phase, but also supplied an English translation of the patent specification, and made the following request:
"We wish the language of the proceedings to be in English. In this respect, we enclose an English language translation of the PCT patent application. This English language translation was prepared for parallel proceedings in Australia. [...] We submit that the language of the proceedings can be English since the EPC does not preclude this event on entry into the European regional phase. [...] [I]n accordance with J 18/90, we hereby request that in all written proceedings and decisions, the EPO uses English."
The examining division were having none of this, and continued writing to the representative in French, which the representative replied to in, of course, English. Finally, the examining division issued a decision, stating:
"1. Il n'est pas fait droit à la requête visant à substituter la langue de procédure française par l'anglaise.

2. Il n'est pas fait droit à la requête visant à ce que l'OEB utilise l'anglaise dans toutes les procedure écrites et décisions.
"
In brief, the examining division didn't think the applicant had the right to change the language of proceedings from one EPO official language to another. The representative then appealed this decision to the legal board of appeal, which issued their decision on 8 December 2008, a mere 2 years after that of the examining division, during which time EPC2000 entered into force. After considering the matter at length (and, of course, in French), the board decided that the question was a sufficiently important one for them to refer the following questions to the Enlarged Board:
"1° Lorsqu'une demande internationale de brevet a été déposée et publiée en vertu du Traité de coopération en matière de brevets (PCT) dans une langue officielle de l'Office européen des brevets (OEB), le demandeur peut-il, dès l'entrée dans la phase régionale devant l'OEB, déposer une traduction de la demande dans l'une des autres langues officielles de l'OEB avec l'effet que la langue de la traduction soit désormais considérée comme constituant la langue de la procédure qui doit être utilisée dans toutes les procédures devant les instances de l'OEB ?

2° Si la réponse à cette question est négative, les organes de l'OEB peuvent-ils utiliser dans la procédure écrite d'une demande européenne de brevets (ou d'une demande internationale entrée en phase régionale) une des langues officielles de
l'OEB autre que celle de la procédure utilisée pour la demande ?

3° Si la réponse à la deuxième question est positive, quels sont les critères à appliquer pour déterminer la langue officielle qui sera utilisée ?
En particulier, les organes de l'OEB doivent-ils faire droit à une telle requête émanant d'une ou des parties ?
"
The IPKat has roughly translated the first question to the following:

"1 º When an international patent application is filed and published under the PCT in an official language of the EPO, can the applicant, upon entry into the regional phase before the EPO, file a translation of the application in one of the other official languages of the EPO with the effect that the language of the translation is seen as the language of the procedure that must be used in all the proceedings of the EPO?"

He is a bit stumped in trying to figure out what the second and third questions are asking exactly, but suspects that they are an attempt to figure out whether, if the official language is to be determined by the language of the PCT publication, a different official language can be used in EPO procedure anyway, and what criteria would apply for this.

The IPKat is not sure what the implications of the Enlarged Board's decision will be, if they decide to allow the official language to be changed in the way the representative in this case wants. It seems unlikely that many applications would be affected. He does, however, have some sympathy with the argument, put forward by the representative in this case, that the current state of affairs is discriminatory, since a Japanese applicant, for example, gets a free choice of which official language to use, whereas a US owner of a French subsidiary, having filed a PCT application in French, does not. Is this fair, or is it just one of those quirks of the international patent system we must live with?

The IPKat would welcome any further comments on this subject, particularly from those who may be more fluent readers of French than he is.

13 comments:

philippe said...

I understand your point.
But the way I see it, the language of proceedings is really only binding having regard to the text of the application (say e.g. French).
The applicant can however also correspond with the examining division in English or German, but any amendment must be in the language of proceedings (FR).
So it is not such a burden.
(ps: you have a great Blog!)

Anonymous said...

The second question applies in the case that the language of the proceedings cannot be changed (which means that the language of the application and the resulting patent cannot be changed). The question is "Can the EPO use an official language different from the language of the proceedings when communicating with the applicant”. Strictly speaking, the EPC provides that the EPO must communicate with the applicant in the language of the proceedings (under Art. 14(3) EPC, the language of the proceedings must be used in written proceedings, unless the regulations allow otherwise, since the regulations do not provide otherwise for the EPO, then the EPO must use the language of the proceedings when communicating in writing with the applicant - EPC Guidelines, A-VIII, 1.2).

However, the regulations do allow the applicant to communicate in any EPO language with the EPO (Rule 3(1) EPC), although this does not change the language of the proceedings and all amendments to the application or patent must be in the language of the proceedings (Rule 3(2) EPC). What this means is that the applicant may file his arguments in any EPO language.

One Board of Appeal decision, J18/90, allowed the EPO to communicate in writing with the applicant/representative in an EPO language other than that of the proceedings, provided that all parties agreed. This question is being re-visited by the second question of the above referral.

With regard to changing the language of the proceedings when entering the European phase from the PCT, the current policy of the EPO is clearly indicated in the EPO Guide for Applicants, Part II, paragraph 330, which is that where the International application was published in an EPO language, a translation into another EPO language should not be filed and if this is done, this translation will be ignored. The EPO language in which the International application was published is the language of the proceedings (EPO Guide for Applicants, II, paragraph 285).

This is consistent with Art. 153(3) EPC, which provides that the publication of the International Application in an EPO language takes the place of the publication of the European application. According to Art. 14(3) EPC, the official language is the language of publication of the European application. From this it could be derived (but the Enlarged may see it differently), that this means that the language of publication of the International application then decides the language of the proceedings of the subsequent European application, in the same way that it replaces the publication of the European application. To decide otherwise, would mean that the language of publication of the European application (via International publication under Art. 153(3) EPC) would not decide the language of the proceedings, which would appear to contradict Art. 14(3) EPC.

The wording of Art. 14(3) EPC does appear to allow the EPC regulations to provide for a change in the language of the proceedings, however, whether it does or not is a moot point, since the EPC regulations make no such provision.

There are ulterior complications as well. If this change in language of proceedings is permitted, then the EPO may find itself assessing compliance with the “no added matter” requirement (Art. 123(2) EPC) between an application filed in one EPO language and then prosecuted in another. Under Rule 7 EPC, in the absence of evidence to the contrary, the EPO assumes that a translation provided to it is correct and so would look to the translated application for the basis for any amendments, without recourse to the originally published International application. However, this provision is designed to avoid having the EPO check translations from non-EPO languages (such as Japanese) which its staff are not required to speak. If the language of the proceedings is allowed to change, then the EPO will be able to check Art. 123(2) EPC compliance and the basis of amendments of the application in a different language compared to the original language of filing and publication, because they would both be EPO languages. This would however, complicate the examination procedure considerably. This problem would also carry over into opposition proceedings, since this is also a ground for opposition under Art. 100 EPC.

MaxDrei said...

Following on from that last comment, if I were the representative, I should be cautious about switching into another language of the proceedings. Just think ahead, to an opponent checking the 100(c) box and making as much mischief as possible with assertions that the translation has added matter during prosecution. Claim 1 and the 123 2/3 fatal trap would be the place to start. Fanciful, you cry. But how sure of that are you? My advice: stay in French.

Andre said...

Well, actually I cannot accept a Patent Office that does not accept German because it is the most spoken language in Europe and the most important language for patent law.

In the end we will all agree with the Alicante rule.

Anonymous said...

...the most important language for patent law? How's that then Andre? Because oral proceedings at the EPO are so often conducted in German, even when English is the language that both sides have used in the written proceedings? Or because of the decisions of the German Federal Patents Court (including the recent one on novelty just squashed by the German Supreme Court). Tell me, who leads, and who follows, on novelty under the EPC? Or were you writing with your tongue in your cheek?

Anonymous said...

I have to agree with MaxDrei: switching languages in the European procedure is asking for Art. 123(2) trouble. I go as far as to strongly advice against filing in a non-EPO language.

The only reason I can find for this appeal is that of convenience for a British patent attorney with apparently a limited grasp of French. And then I must really question whether he's really acting in his client's best interests by going through all this legal gauntlet, rather than handing the file over to someone better equipped in the language department...

MaxDrei said...

Yes, anonymous, but maybe Andre will now put us straight, telling us that in Germany (the most important country) a relaxed enough view of 123(2) EPC is taken, to make all our worries illusory and that it's only a matter of time before all other jurisdictions in Europe see it the German way (skilled person really is skilled). Remember the European Central Bank case, at the BPatG? No new subject matter there. Oh no.

Anonymous said...

Seems strange that the examiner continues to write in French since the EPC and Guidelines do not force us to do this. Indeed it is up to the examining division to decide the language of oral proceedings and may change language if they have a good reason (see also Visser re. Rule 4 EPC. The claims/description must remain in the language of proceedings.

Back at the main point, changing the language of proceedings is not ruled out so why not?

Finally, oral proceedings in opposition are public and should be held in the language of proceedings. What happens if the English-speaking public attends an English language OP, only to find out that the (often) two German attorneys or a mixture of French/German/English speakers/listeners has caused the EPO to change to German/French in order to save on interpreter costs?

Anonymous said...

In response to anonymous at 9.59:

Your comments re. "apparently a limited grasp of French" and "handing the file over to someone better equipped in the language department" are unfortunately quite typical of the attitude of many European based Patent attorneys.

I have seen many many cases that have been badly drafted and/or prosecuted by Patent Attorneys who assume that as they are fluent in English you are able to prosecute (and even draft!) patent applications in English...this misplaced confidence is not acting in the clients best interests!

In any case, for the Attorney to push things as far as an appeal I'd imagine the client must also be keen to have their application in English.

MaxDrei said...

Question: how many forms of "English" are there? Answer: I can think of at least three, namely:

1. British English

2. American English and

3. Globish (English as a second language).

I think I know which one of these mainland Europe is most at home with. I am wondering i) who knows best what a patents judge in Germany, The Netherlands or Paris thinks of the English language B publication, and ii) which representative will be best able to draft for success in Duesseldorf or Den Haag? One thing we can all agree on, it isn't an easy task. The EPO puts an international 3 member team on the examining job. Good idea, what?

RV007 said...

The apparent difference in treatment of applicants using an official language of the EPO compared to those not doing it (or not able to do it) is also fair to a certain extent, because the former applicants benefit from the advantage of being able to file and have their application prosecuted (in most cases) in their mother tong (being recognized as an EPO official language), while the latter suffer from this limited number of EPO languages, and do have to file a translation in one of the EPO languages. What do you think can be the opinion of those applicants not having their language as offcial language of the EPO in terms of difference of treatment ?
This being said, whatever difference of treatment may exist, it is a point that it would be more practical for international applicants to have the possibility to request a change in the language of proceeding. Not sure it would be more practical for the EPO though, therefore not sure it will be so decided by the EBA.

Anonymous said...

Voilà un débat bien pathétique: faut-il imposer l'eurosceptical language dans les institutions. Il faudrait à mon avis imposer le chinois car de toutes façons, les clients finissent pas fabriquer leurs produits dans ce pays, il leur serait ainsi plus facile de suivre l'étape préliminaire à la fabrication. L'anglais est toute fois bien utile pour le rock n' roll, je dois l'avouer...

David said...

How about latin instead? English, by the way, is used in 70% of proceedings before the EPO. Why not just go the whole way and make it the actual official language, rather than merely the de facto one?

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