OJ 2009 #4

J8/07: Change in language of proceedings ; referral to EBoA

An applicant filed a PCT application in French at the EPO as receiving office. Upon entry in the regional phase before the EPO applicant files an English translation of the PCT application and requests the language of proceedings before the EPO to be changed into English. The request was refused and applicant filed an appeal basically arguing that there is no legal provision in the EPC that does not allow a change in language of proceedings for PCT applications filed in a first official EPO language (in this case French) and later on translated into a second official language (in this case English). The Legal Board of Appeal referred the case to the Enlarged Board of Appeal with the following questions:

The following questions are referred to the Enlarged Board of Appeal:

1. If an international patent application has been filed and published under the Patent Cooperation Treaty (PCT) in an official language of the European Patent Office (EPO), can the applicant, on entry into the regional phase before the EPO, file a translation of the application into another EPO official language which then becomes the language of all subsequent proceedings before the EPO?

2. If the answer to that question is no, can EPO departments use, in written proceedings on a European patent application (or an international application in the regional phase), an EPO official language other than the language of proceedings used for the application?

3. If the answer to question 2 is yes, what criteria must be applied to determine the official language to be used? In particular, must EPO departments agree to any such request from a party or parties?

This referral has been assigned XXXX

OJ 2009, 236 : Copy of priority application

Article 1: Inclusion of a copy of the previous application in the file of a European patent application The European Patent Office shall include free of charge in the file of a European patent application a copy of the previous application from which priority is claimed if the previous application is:

(a) a European patent application,

(b) an international application filed with the European Patent Office as receiving Office under the Patent Cooperation Treaty (PCT),

(c) a Japanese patent or utility model application,

(d) a Korean patent or utility model application,

(e) a United States provisional or non-provisional patent application.

This decision shall enter into force on 1 April 2009 and replaces the decision dated 12 July 2007 on the filing of priority documents (Special edition No. 3, OJ EPO 2007, B.1).

The above text is included in the OJ 2009 Summary available from the download area.