Filing of an application

Principle

Since the entry into force of the EPC 2000, there is no language requirement for filing (i.e. obtaining a filing date).

If the application is filed in an official language, there is nothing to be done and this official language becomes the language of the proceedings.

If the application is not filed in an official language (A14(2) EPC), it is necessary to provide a translation in one of the official languages within 2 months (R6(1) EPC). The language of this translation becomes the language of the proceedings.

Attention: the provisions of A14(4) EPC do not apply to the filing of an application (so the deadline is indeed 2 months to submit the translation), even if the fee reduction of R6(3) EPC is indeed open to applicants:

  • having their domicile (or their registered office) in one of the contracting states (or if they are a national of one of these states having their domicile abroad),
  • that this country has an official language other than German, English or French,
  • who file their application in one of these languages (or that they make a reference to a previous application in one of these languages).

Filing in several languages

In decision T382/94, the board of appeal indicated that if the annotations of the drawings were in a different language from that of the description, this had no impact on the filing date (the claims and the description had been filed in German, but the drawings included text in English).

What if part of the description or a claim is in a different language from the rest of the description?

Before the entry into force of the EPC 2000, the EPO refused to grant a filing date in these situations (J18/96) on the grounds that the letter of A14 EPC 73 was

European patent applications shall be filed in one of these languages

Today, the wording is different (A14 EPC), but similarities can still be found:

Any European patent application shall be filed in one of the official languages or, if it is filed in one other language, translated into one of the official languages, in accordance with the Implementing Regulations.

I therefore think that the EPO’s position would be the same: the principle of the uniqueness of the language of European patent applications would be the rule.

However, this uniqueness only concerns the description: if the claims are in a different language, this does not pose any problems (Guidelines A-X 9.2.2, the claims not being a requirement to obtain a filing date).

Case of a divisional

The language of filing of a divisional application must be that of the filing of the parent application or, at the applicant’s choice, the language into which the application was translated (R36(2) EPC).

Thus, if a European patent application was filed in Italian and then translated into English according to the provisions of A14(2) EPC, it is possible to file a divisional in Italian or in English.

Written procedure before the EPO

The rule

Contrary to popular belief, the applicant, the opponent, etc. may use any official language of the EPO (R3(1) EPC and Guidelines A-VII 2) to respond to notifications, to file any document, etc. (except for documents relating to amendments to the application, Guidelines A-VII 1.2).

In reality, only the EPO is bound by the language of the proceedings (Guidelines A-VII 1.2).

Derogation from A14(4)

Principle

If a person has their domicile (or registered office) in one of the Contracting States (or if they are a national of one of these States residing abroad) and that State has an official language other than German, English or French, they may file any document to be produced within a specified time limit in that language (A14(4) EPC).

When referring to « a person » in the preceding paragraph, the representative is ignored (T145/85).

This language is not necessarily the language of filing.

A translation must be submitted (A14(4) EPC) at the earliest simultaneously with the untranslated document (G6/91) and within a period of 1 month from the date of submission of the document (R6(2) EPC) and not from the end of the time limit, in one of the official languages of the Office regardless of the language of the proceedings (Guidelines A-VII 2).

This translation may, if the following time limit expires later, be filed (R6(2) EPC) :

  • within the opposition period (if the document is the notice of opposition);
  • within the appeal period (if the document is the notice of appeal);
  • within the period for filing the statement of grounds of appeal (if the document is the statement of grounds of appeal);
  • within the period for filing a petition for review (if the document is a petition for review).

Beware, because if a person who cannot benefit from the provisions of A14(4) EPC attempts to file a document in an unauthorized language by filing a translation on the same day, they will not be able to argue a posteriori that the translation can serve as the original: the document being only a translation, it will be deemed never to have been produced (T1152/05).

Reduction of fees

Before April 1, 2014

If all conditions are met for the essential document of a procedural step, the person will obtain a 20% reduction in fees (R6(3) EPC together with A14(1) RFR) for that step.

The essential document is:

  • the description of the application for the filing fee;
  • the statement specifying the extent to which the European patent is opposed under R76(2) c) EPC for the opposition fee;
  • the notice of appeal (and not the statement of grounds) for the appeal fee;
  • the request for examination for the examination fee;
  • the request for limitation or revocation for the limitation or revocation fee;
  • the request for review for the review fee.

This reduction is a priori available in the case of multiple applicants (or co-proprietors or co-opponents, etc.), with only one meeting the conditions set out below (see the wording of R6(3) EPC: « a person« ).

As of April 1, 2014

However, for applications filed (entering the phase) as of April 1, 2014 (« Decision of the Administrative Council of 13 December 2013 amending Rule 6 of the Implementing Regulations to the European Patent Convention and Article 14(1) of the Rules relating to Fees« , OJ 2014, A4), to benefit from this reduction, all applicants must be (R6(4) EPC and R6(7) EPC):

  • a small or medium-sized enterprise;
  • a natural person; or
  • a non-profit organization, a university, or a public research body.

The criteria are given in the Commission Recommendation 2003/361/EC of 6 May 2003 (R6(5) EPC).

Applicants must declare their membership in one of the categories mentioned above, but the EPO may request evidence in case of doubt (R6(6) EPC).

The applicant will obtain a 30% reduction in fees (A14(1) RFR) but only concerning:

  • the filing fee;
  • the examination fee.

Penalty

If the translation provided for in A14(4) EPC is not submitted within the 1-month time limit (or within the extended time limit above), the document shall be deemed not to have been submitted. The EPO shall inform the person who submitted the document (Guidelines A-VII 5).

A121 EPC applies to a document relating to:

  • grant;
  • ex parte appeal proceedings.

A122 EPC applies to all other cases (except for the opponent unless it concerns the statement of grounds of appeal, G1/86).

If the document that has not been translated is the cover letter of a procedural act (e.g., submission of a certified copy of a previous application), the act will still be accomplished if it is possible to identify the application number to which it relates (Guidelines A-VII 5).

Special cases

Third-party observations

Third-party observations (A115 EPC) may only be filed in an official language of the EPO (R114(1) EPC) and may not benefit from the exceptions of A14(4) EPC.

Indeed, these documents are not required to be submitted within a specific time limit.

However, the Guidelines A-VII 3.5 provide that the EPO may invite the third party, if identifiable, to provide a translation.

Publication

The publication of the application is made in the language of the proceedings (A14(5) EPC).

Amendments to the application

Amendments to the application must be filed in the language of the proceedings (R3(2) EPC and Guidelines A-VII 2).

They are not required to be submitted within a specific time limit and therefore cannot benefit from the exceptions of A14(4) EPC: Indeed, the applicant is not obliged to file amendments; it is only a possibility (A123(1) EPC); only a response to the notification is mandatory (A93(4) EPC).

Evidence

Evidence may be submitted in any language (R3(3) EPC).

However, the EPO may require a translation into the language of the proceedings, to be provided within a specified time limit (which may depend on the length of the document, Guidelines A-VII 3). If the translation is not provided within the time limit, the EPO may disregard this evidence.

Focus on translations

Certifications

When a translation is required, the EPO may require a certificate certifying that the translation conforms to the original text (R5 EPC). This certificate must be submitted within a specified time limit. This time limit benefits from:

  • A121 EPC for the applicant;
  • A122 EPC for the proprietor and the opponent in the case of the translation of the statement of grounds of appeal G1/86).

Correction of the translation

It is possible, at any time during the proceedings, to make the translation conform to the text of the application as filed (A14(2) EPC).

Caution, because if this happens during the opposition proceedings (or at least after grant), the provisions of A123(3) EPC must not be violated.

For the correction of translations relating to documents filed within a specific time limit (A14(4) EPC), it is necessary to proceed with an amendment under R139 EPC.

Oral proceedings

The language of the oral proceedings is the language of the proceedings (R4(1) EPC), but any party may request to use:

  • another official language:
  • an official language of a Contracting State:
    • The translation into the language of the proceedings is at the expense of the party requesting it (R4(1) EPC).
  • another language (R4(4) EPC)
    • If the EPO and the parties agree.

This request for translation must be renewed at the appeal stage (T34/90).

The EPO may authorize certain exceptions regarding translation (R4(1) EPC), notably if the translator is ill and everyone agrees to continue without translation).

Warning: translation cannot be requested to allow a third party (or one of their employees) to attend the oral proceedings because they do not understand the language of the proceedings (T2696/16).

Decisions

Since decisions are a written procedural act, what has been said above applies.

Only a decision in a single procedural language meets the requirements of R111(2) EPC regarding the reasoning of decisions.

Thus, it is not possible to include passages from the opposition brief in English (and without translation) in a decision rendered in German (T1787/16).