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T 0700/05: Bringing a translation into conformity under Art. 14(2) EPC 1973

Article 14(2) EPC 1973 relates to applications filed at the EPO by a natural or legal person having their residence or principal place of business within the territory of a Contracting State having a language other than English, German or French. Such applicants may file an application at the EPO in the official language of that Contracting State, but then need to file a translation into an official language of the EPO.

Article 14(2) EPC 1973 states in its last sentence that "throughout the proceedings before the European Patent Office, such translation may be brought into conformity with the original text of the application".

This provision has been changed in EPC 2000 under which a European Patent application may be filed in any language.

In this case a Japanese applicant filed a PCT application in Japanese at the Japanese Patent Office designating the EPO. Upon entering the regional phase, applicant filed a translation in English.

During opposition the proprietor finds out that there was an error in the translation and requests correction.

The Board of Appeal first establishes that the provisions of EPC1973 apply. The Board then says the following (reason 4) :

The international patent application [..] was filed by an applicant having its place of business in Japan. The international application designated the European Patent Office [..] and was thus deemed to be a European patent application pursuant to Article 150(3) EPC 1973. A translation into English of this international application was provided to the EPO, as prescribed by Article 158(2) EPC 1973 in conjunction with Article 14(1) EPC 1973.

Taking into account that Euro-PCT applications are deemed by Article 153(2) to be European applications and the principle that they thus must be treated as favourably as applications made in a Contracting State, a PCT application originally filed in Japanese must be treated in the same way as an application filed in the language of a Contracting State which language is not an official language of the EPC. The provision of Article 14(2) EPC 1973 must thus be applied by analogy to allow also the translation into English of an original PCT application in Japanese to be brought into conformity with the original Japanese text of the application throughout the proceedings before the European Patent Office, i.e. also including opposition and appeal proceedings.

To me this is a bit of a strange decision. For example, take the situation where there were a Spanish and a Mexican applicant. Both applicants have their mother tongue in Spanish, which is a publication language under the PCT.

Both applicants could have filed a direct European Patent Application (Art. 58). However, only the Spanish applicant was allowed to file his application in Spanish, whereas the Mexican applicant needed to file in French, German or English. Thus, the Spanish applicant could have brought (or can bring) his translation into conformity under Article 14(2) EPC 1973, whereas the Mexican applicant could/can not unless he had first filed a PCT application in Spanish and then entered the regional phase before the EPO.

Maybe this is established practice of the EPO, or maybe I'm missing the point, but from this decision one may draw the conclusion that applicants from non-contracting states had better filed a PCT application (in a publication language of the PCT) rather than a direct European application if they wanted or want to rely on the provision of Article 14(2) EPC 1973 last sentence.

Anyway, under EPC 2000 this is no longer an issue as direct European Applications may now be filed in any language.....

Read the decision here.

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  1. I may be confused here, but I would tend to agree with the board.
    The difference here lies in the fact that a PCT application and a European application are different.
    In the case of the European application, article 14(2) applies straight away as you mentioned.
    In the case of the Mexican applicant, then his application would not get a filing date.
    However, with the PCT application, it's different, since the EPO is forced to give the application a filing date. This in turn opens the door for the analogy reasoning.
    That is, since the EPO has given a filing date to the PCT application, there is no ground for applying the "non EP applicant" exclusion based on article 14(2).
    That's where article 70(2) comes into play, which is the basis for the analogy mentioned.

  2. Thanks for your comment. Just so you know I'm not saying I disagree with the Board. My comment was merely directed to the situation where applicants from inside and outside the contracting states share the same "mother tongue" and the (in my view at first sight strange) situation that this might create.


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