Amended Rule 36: Translation issue resolved for divisionals

Note: This post relates to new Rule 36, which will enter into force 1 April 2010!

According to Article 76(1) a divisional application may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed. The divisional application shall be in the language of the proceedings for the earlier application, see present Rule 36(2).

Suppose now an applicant files a first application in Greek, which is allowed under Article 14(2), and within the period of Rule 6(1) he files a translation in English. According to Article 14(3) English will therefore be the language of proceedings.

The applicant may however bring the translation into conformity with the application as filed, which was the application in the Greek language. Thus, if during the course of proceedings translation errors are found, such errors may be corrected.

Suppose now that the same applicant files a divisional application before having made any correction in the first application. This divisional should be filed in English according to present Rule 36(2). This has the effect that the language of the application as filed for the divisional is English and not Greek. Consequently, the applicant will not have the opportunity to bring the divisional application into conformity with the earlier application in Greek.

This can have the effect (in a worst case scenario) that the divisional application, due to an error in translation, may be refused or revoked.

This rather strange situation has been resolved by the amendment to Rule 36(2) which allows the divisional to be filed in the language of the earlier application (i.e. in Greek). By doing so, the language of the application as filed will be the Greek language and consequently the English translation may be brought into conformity during the course of proceedings before the EPO.

There's a lot more to say about the Rule changes anounced in OJ 2009 #5 but the above situation may be a good candidate for the D exam....