Where the previous application claimed as priority is not in an official language of the EPO and the validity of the priority claimed is relevant to the assessment of the patentability of the invention concerned, the EPO shall invite the applicant for or proprietor of the European patent to file a translation into an official language of the EPO within a period to be specified.
Since the applicant for a European patent might not have to file a translation in the examination procedure, in cases where the validity of the claimed priority becomes relevant in the assessment of patentability in opposition proceedings, the EPO may make the above invitation during the opposition procedure.
In practice, the Search, Examining or Opposition Division dealing with the patent application or patent will inform the Formalities Officer that a translation of the priority is required and the Formalities Officer will then despatch the above communication.
If the applicant for or proprietor of the European patent does not provide the translation in time, then the intermediate document(s) which resulted in the validity of the priority claimed becoming relevant for the assessment of patentability will be considered to belong to the prior art under Art. 54(2) or Art. 54(3) as applicable. There is no further invitation to the applicant or proprietor to file the translation. However, if the applicant fails to observe this time limit, he can request further processing according to Art. 121 and Rule 135.
Where the applicant has already supplied a translation of the priority in the context of a request to base late-filed parts of the description or drawings on the claimed priority under Rule 56 (see A-II, 5.4(vi)), the applicant does not need to file it again.
The applicant for or proprietor of the European patent can file a translation of his priority of his own motion at any time during examination or opposition proceedings before the EPO.
Alternatively, a declaration that the European patent application is a complete translation of the previous application may be submitted within those same time limits (see also F-VI, 3.4, and D-VII, 2). The declaration may already be made by crossing the appropriate box in the Request for Grant form (Form 1001). This declaration is only valid if the text of the European application as filed is an exact translation of the text of the earlier application of which priority is claimed. If the European application did not contain claims on the date of filing (see A-II, 4.1), the applicant can file these later (see A-III, 15). In such cases, for the declaration to be valid, the description of the European application must be an exact translation of the description of the claimed priority, regardless of whether the priority application contained claims on its filing date. However, where the European application contains claims on its date of filing and the priority application did not contain claims on its filing date or contained fewer claims on its filing date, the declaration is not valid. Furthermore, if the European application contains more or less text than is contained in the earlier application as filed, such a declaration cannot be accepted. Where the declaration cannot be accepted for any of the above reasons, in order to comply with the requirement for filing a translation, a complete translation must be filed within the above-mentioned time limit. A merely different arrangement of the various elements (i.e. the claims vs. the description) of the application does not affect the validity of such a declaration (for example, the claims are presented at the end of the application, whereas in the priority application they are at the beginning), nor does a different type of reference sign (e.g. Arabic rather than Roman numerals). However, a declaration is not acceptable if changes have been made within the parts of the application (e.g. different order of claims, added reference signs) or if sections of the application (e.g. listing of components, section headings and words in the drawings) are not identical to those in the priority application.