The language of proceedings used before the EPO can never be changed – this includes the language used before the international receiving office if that language is English, French or German

February 18, 2010

The Enlarged Board of Appeal of the European Patent Office (EPO) has for the second time this week issued a decision. This latest decision, G 4/08 of 16 February 2010, relates to the language of proceedings, and it clarifies that it is never possible to change the language of the proceedings. According to Article 14(3) of the European Patent Convention, the official language of the EPO 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 EPO, unless the Implementing Regulations provide otherwise. The three official languages of the EPO are English, French and German.

The European patent application in question, EP 02759818.4, relates to a vaccine against the Nile Fever virus. It is the European regional phase application of an International application, which was filed and published in French. When the regional stage before the EPO was entered in November 2003 it was requested that the language of the proceedings should be English, and an English translation of the application was filed at the same time. If the EPO would not allow the language to be English, an appealable decision on this was also requested. The applicant further made two auxiliary requests in case the EPO would not allow the change of language. Thus they requested that if English was not allowed as language of the proceedings, the EPO should use English in all written proceedings and decisions, and finally, if this was not allowed, the prosecution of the application should proceed in French. In December 2006, the EPO issued a decision to reject the request for a change of the language and also the first auxiliary request. This decision was appealed by the applicant, and after oral proceedings held in April 2008, the following three questions were referred to the Enlarged Board of Appeal in December 2008:

Question 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 one of the other EPO official languages with the effect that the language of this translation must then be considered as language of the proceedings to be used in all proceedings before the EPO?

Question 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?

Question 3 
If the answer to question 2 is yes, what are the criteria to be applied in determining the official language to be used? In particular, must EPO departments accede to such a request from a party or parties?

In its decision the Enlarged Board of Appeal explains that the EPC (neither in the form of the current EPC, EPC 2000 or the earlier EPC 1973) does not allow replacement of a euro-PCT application published in an official language with a translation into another official language. Thus the response to Question 1 is that when an international patent application has been filed and published under PCT in an official language of the EPO, it is not possible, on entry into the European regional phase, to file a translation of the application into one of the two other languages with the effect that the language of this translation is considered as language of the proceedings to be used in all proceedings before the EPO. In this context the Enlarged Board of Appeal refers both to Article 14(3) EPC, discussed above, and to Article 158 EPC 1973 corresponding essentially to parts of Article 153 of the current EPC, respectively. The Enlarged Board of Appeal in particular refers to Article 158(2) EPC 1973. The same Article is not explicitly found in the current EPC, however, it has become part of Article 153(4). The latter in combination with Rule 159(1)a) specify that a translation of an international application shall be supplied upon entry into the European phase if the Euro-PCT application is published in another language than English, French or German, and that this translation shall be published. Article 153(3) further specifies that the international publication of a Euro-PCT application in an official language of the EPO shall take the place of the publication of the European patent application. The term Euro-PCT is explained in Article 153(2) as an international application for which the EPO is a designated or elected office, and it is further stated that if an international date of filing has been accorded, it shall be equivalent to a regular European application. They further conclude that there is no conflict between these regulations and the regulations of the PCT.

The Enlarged Board of Appeals goes on to clarify that the only applicable law to Question 2 is the current EPC, and that it does not allow the EPO departments to 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 in accordance with Article 14(3). The decision is thus stricter than similar decisions issued prior to EPC2000, including J 18/90.

Since the response to Question 2 thus is no, the Enlarged Board of Appeal does not respond to Question 3.

The complete text of the decision can be found here. It is only available in French – the language of proceedings.

Maria Stenbäck
European Patent Attorney