European Round-Table on Patent Practice (EUROTAB)
|European Case Law Identifier:||ECLI:EP:BA:1981:J000780.19810311|
|Date of decision:||11 March 1981|
|Case number:||J 0007/80|
|Language of proceedings:||EN|
|Download and more information:||
|Title of application:||-|
|Headnote:||I. If the wrong applicant is named in an application and the wrong applicant and the correct applicant are both companies forming part of the same group of companies then the mistake may be corrected under Rule 88 EPC, if there is sufficient evidence to support the request for correction.
II. Where documents making up an application are partly in an official language of the European Patent Office and partly in another language which is an official language of a Contracting State, then, for the purposes of deciding whether the application complies with Article 14(1) or (2) EPC, in accordance with Article 80(d) EPC, the significant language is that used for the description and claims. Other documents making up the application should normally be corrected by translation into that language.
|Relevant legal provisions:||
Summary of Facts and Submissions
I. On 5 June 1979, a professional representative employed by a Dutch subsidiary of a Swedish company filed an application for a European patent in the name of the appellant, another Dutch subsidiary of the Swedish company, at The Hague Branch Office of the European Patent Office. In order to preserve priority rights derived from a national application made in Sweden on 13 June 1978 by the Swedish company, the representative filed a description and claims with the European Patent Office in the Swedish language, as there was insufficient time to prepare translations into English, the official language used in the request for grant, before the expiry of the priority period of twelve months on 13 June 1979. Translations into English of the description and claims were subsequently filed on 27 June 1979.
II. On 18 October 1979, the appellant's professional representative sent to the Hague Branch Office of the European Patent Office a Deed of Assignment, dated 3 October 1979, under which the Swedish company assigned to the applicant "the rights in all European States as designated according to the European patent Convention" for the invention described in the Swedish national application, as well as "all rights, titles and interests in and to any patent" that might issue on the European application. This was received by the Office on 22 October 1979 but not, apparently, added to the file until 4 December 1979.
III. In the meantime, by a Decision dated 27 November 1979, the Receiving Section held that, in accordance with Article 80(d) EPC, the date of filing the application was considered to be the date of receipt of the English translations.
IV. By letter dated 21 January 1980, the appellant gave notice of appeal against this Decision. The appeal fee was duly paid and a Statement of Grounds was set out in a letter dated 24 March 1980, received within the prescribed period.
V. In its Statement of Grounds, the appellant pointed out inter alia that all the companies concerned formed part of the same group of companies and all had their places of business within the territories of Contracting States. The appellant's representative protested against what he considered to be excessive formalism on the part of the Office.
VI. By a letter dated 21 July 1980, the Legal Board of Appeal drew the attention of the appellant to the fact that, from the file, there appeared to have been an error in identifying the correct applicant and its nationality when the European Patent application was filed on 5 June 1979. According to the Deed of Assignment dated 3 October 1979, the correct applicant as at 5 June 1979 must have been the Swedish company. It was indicated that it might be possible for the Board to consider an application for correction of the application form by substituting the correct name and nationality of the applicant. If such an application were allowed, the Board might then hold that the present applicant was entitled to the benefit of the date of filing of 5 June 1979, as assignee of a Swedish applicant who was entitled under Article 14(2) EPC to file in the Swedish language.
VII. By a letter dated 11 September 1980, received by the Board on 6 October 1980, the appellant's representative asked for correction of the application form and he enclosed an amended application form.
VIII. By a letter dated 22 October 1980, the Board drew the attention of the appellant's representative to the Decision of the Board in Case J 08/80 (Official Journal EPO, 1980, page 293) that evidence is necessary when correction of a mistake is sought. Attention was also drawn to the fact that there was no indication in the file of the case or in the records of the Office that the appellant's representative was authorised to act for the Swedish company in June 1979.
IX. Under cover of a letter dated 7 November 1980, the appellant's representative submitted a signed statement, described as a "Power of Attorney", to the effect that the appellant's representative was authorised to act in the name of and on behalf of the Swedish company in matters relating to filing patent applications in The Netherlands and to do everything that the person who signed the statement was able to do. The person who signed the statement is recorded in the records of the European Patent Office as having a general authorisation to act on behalf of the Swedish company in proceedings established by the EPC.
X. On 28 January 1981, the appellant's representative had a discussion with the Board, during which the facts of the case were reviewed and the argument considered that, since the application in question was a European application which could be, and was, filed in The Netherlands and designated inter alia The Netherlands, it came within the scope of applications mentioned in the signed statement submitted with the letter of 7 November 1980.
Reasons for the Decision
1. It is clear from the terms of the Deed of Assignment, dated 3 October 1979, that at 5 June 1979 the right to apply for and obtain a European Patent for the invention described and claimed in the Swedish national application belonged to the Swedish company. It did not belong to the present applicant until the assignment became effective, at a later date.
2. Accordingly, it is clear from the file of the case that the application form as originally filed contained the name, address, telephone number and nationality of the wrong applicant. If those errors are corrected, the present applicant, as assignee of the Swedish company, is clearly entitled to the benefit of the filing date of 5 June 1979, since the Swedish company was entitled to that benefit by virtue of the provisions of Article 14 (2) EPC. The assignment must be duly recorded, in addition.
3. This Board is satisfied that the request to correct the errors in the original application form is a proper request under Rule 88 EPC. There is sufficient evidence in the file of the case to support the request which may, therefore, be allowed.
4. It must, however, be observed that the application as originally filed did not comply fully with Article 14(2) EPC, as the request which, according to Article 78(1) EPC, is also part of the application, was drafted in English. But, so far as choice of language is concerned, the significant parts of an application are the description and the claims, as is clear from Article 80(d) EPC. The application fulfilled the requirements of that Article at the time of filing on 5 June 1979. It follows that the decision of the Receiving Section was wrong.
5. The formal deficiency that the request for grant was in English, not Swedish, could be remedied, but the Board considers correction of that deficiency to be unnecessary at the present stage of the procedure.
6. No application has been made for reimbursement of appeal fees in accordance with Rule 67 EPC, and it is not considered that the circumstances of the case would have justified such an order.
For these reasons, it is decided that:
1. The request for correction of the application form in accordance with Rule 88 EPC is granted and it is ordered that the amended copy of the form submitted by the appellant under cover of the letter dated 11 September 1980 shall be added to the file and treated as if it had been the original.
2. The appeal against the Decision of the Receiving Section dated 27 November 1979 is allowed and that Decision is set aside.