J 0018/90 (Denmark - expressly) 22-03-1991
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1. The express designation of a new Contracting State in a European patent application shortly before entry into force of the European Patent Convention for that state is no justification for deferring the filing date until the date of entry into force (cf. J 14/90, OJ EPO 1992, 505). However, such express designation may, after checking with the applicant, be interpreted as meaning that the applicant does not want a filing date earlier than the date on which the European Patent Convention enters into force for the state concerned.
2. In written proceedings before the European Patent Office and in its decision the Office may also use an official language other than the language of proceedings provided that all parties to the proceedings have given their agreement.
Filing date - later by interpretation
Official language - other than language of proceedings in written procedure and decision
I. The applicants filed European patent application No. 89 124 087.1 on 28 December 1989, claiming an (earliest) priority date of 7 January 1989. In Section 26 of the Request for Grant form (as published in OJ EPO 1986, 306) they made all twelve designations then possible and added the typewritten entry "Dänemark/Denmark-DK-X", for which they also paid a designation fee. The Receiving Section of the European Patent Office declared the addition null and void and refunded the designation fee.
II. On 2 March 1990 the applicants took the precaution of filing a separate application for Denmark (No. 90 104 109.5), describing it as a divisional application and claiming 1 January 1990 as the filing date.
III. By decision of 23 April 1990 the Receiving Section of the EPO refused a main request by the applicants that European patent application No. 89 124 127.1 be accorded the filing date 1 January 1990 and an auxiliary request that they be allowed to pursue two applications - one with the filing date 28 December 1989 for all States except Denmark and one with the filing date 1 January 1990 for Denmark. The main grounds for refusal were that the EPO basically had no option other than to fix as the "filing date" the date on which the application documents fulfilling the requirements of Article 80 EPC were filed. A later date could be accorded only on the basis of a legal provision. No such provision existed for a case of this type. A different outcome could be contemplated only if it were absolutely clear that the applicant intended to obtain a later filing date. An application based on a priority might contain a broadening of the invention, for the patentability of which the filing date and not the priority date was decisive.
IV. In their appeal, which was admissible, the appellants submitted that Article 80 EPC contained only the minimum requirements for the earliest possible filing date and did not exclude re-dating to a later date. Even the Receiving Section of the EPO would in cases of this type put off allocating the filing date if this was expressly requested upon filing. If there was no express request, one could be filed subsequently and could also, if necessary, be effected as the correction of an error under Rule 88, first sentence, EPC.
V. In the present appeal case, J 18/90 - Canon, as well as in J 14/90 - Flachglas (OJ EPO 1992, 505) and J 30/90 - Shea (OJ EPO 1992, 516), both of which also related to the designation of Denmark in connection with the date of entry into force of the European Patent Convention for Denmark, the Board invited the President of the European Patent Office to comment under Article 12a of the Rules of Procedure of the Boards of Appeal (OJ EPO 1989, 361). He commented in writing on the present case as follows:
The filing date was defined by Article 80 EPC as the date on which the requirements mentioned in that Article are fulfilled. This date had to be allocated as the filing date by the Receiving Section which could not make it dependent on whether the request for grant contained any inconsistencies. Legal certainty required an unequivocal filing date since this marked the starting point from which important time limits were calculated. Only if it were absolutely clear that the applicant wanted a later filing date might it be possible to grant him this wish. In this case the applicants' wishes were not absolutely clear, since the filing date might have been decisive for the patentability of a broadening of the invention beyond the content of the priority documents. Where the applicants' wishes were not absolutely clear, it was not the responsibility of the Receiving Section to establish clarity by querying them. The filing date could be deferred by a later request from the applicant only on the basis of unambiguous legal provisions. Such provisions existed, in Article 91(6) in conjunction with Rule 43(2) EPC, only for subsequently filed drawings.
VI. In a letter dated 26 February 1991 the appellants again paid the designation fee for Denmark by cheque and requested that
1. the contested decision be set aside;
2. (in accordance with their main request) European patent application No. 89 124 087.1 be accorded the filing date 1 January 1990;
3. (in accordance with their auxiliary request) the divisional application for Denmark No. 90 104 109.5, filed separately as a precaution on 2 March 1990, be accorded the filing date 1 January 1990.
They further agreed to German being the language used in the written proceedings and decision.
1. Although the language of proceedings is English the decision may be delivered in German. The applicant and sole party to the proceedings has expressly agreed to German being used in the written proceedings. For any oral proceedings the minutes referred to in Rule 76 EPC could therefore also have been written in German.
1.1 Under the previous law the EPO could in written proceedings use an official language other than the language of proceedings only after the latter had been changed in accordance with Rule 3 EPC, which required a request to that effect by the applicant or patent proprietor. This option was occasionally used in appeals, for example in one of the seven Enlarged Board of Appeal decisions concerning the "second medical use" (OJ EPO 1985, 59). It is sometimes preferable, in view of the complexity of the questions for decision, to choose an official language other than the language of proceedings purely and simply because all parties are more familiar with it and thus better able to cope with the fine distinctions. There are therefore solid grounds for the provision in Article 4(5) of the Rules of Procedure of the Boards of Appeal (OJ EPO 1983, 7) under which, internally, decisions can be written in an official language other than the language of proceedings. This however also involves them being arrived at in the other language. Translations in the language of proceedings remain merely translations, regardless of their quality. It need not be concealed that occasionally the "official" text is not the text in which the decision was arrived at, but a translation. Conversely, what appears in the Official Journal as a "translation" may be the original text. Such a situation was hitherto avoided by amending the language of proceedings in the interests of all parties involved. This improved mutual understanding, enabled all concerned to express themselves in a more nuanced manner, provided an honest reflection of the true situation and increased efficiency.
1.2 Nor has this possibility been eliminated by the deletion of Rule 3 EPC (cf. OJ EPO 1991, 4). As far as is known, the aim of the deletion was merely to prevent forms being used in the wrong language and invalid communications and decisions being issued after the language of proceedings had changed. It was not intended to prevent the Office from using an official language other than the language of proceedings in written proceedings - and in particular decisions - where all parties involved agree to such use. Provided there is such agreement, the Office can use an official language other than the language of proceedings even in written proceedings: what is possible in oral proceedings without the agreement of the parties under Rule 2(2) EPC cannot very well be ruled out in written proceedings where the parties' agreement has been obtained.
1.3 Obviously, even where another official language is used, the European patent application and European patent remain unaffected in the language of proceedings. In line with the position under Rule 3(2) EPC amendments to these texts can only be filed in the language of proceedings. Such amendments can also be discussed only with reference to the original text, i.e. to the language of proceedings, and amended versions be decided upon by the Office only in the original text.
2. The Board of Appeal considers that this case can be resolved not by deferring the filing date but by interpreting the content of the request for grant received on 28 December 1989 in the light of the fact - known at the time to both the EPO and the applicant - that the European Patent Convention would come into force for Denmark on 1 January 1990 (cf. OJ EPO 1989, 479), while the application's period of priority did not expire until 7 January 1990. The possibility that the date 28 December 1989 rather than 1 January 1990 could be of significance for any broader disclosure is so remote and hypothetical that it cannot affect interpretation of the request for grant. Statements that need to be interpreted are by their very nature not absolutely clear - otherwise they would not require interpreting. A possible exception cannot invalidate a compelling interpretation of the applicant's intentions, even if enquiries have to be made in order to establish absolute certainty.
3. While it is correct that it is not normally the responsibility of the Receiving Section to check application documents for consistency and to query contradictions, this is not the case where a patent application filed on 28 December of one year designates a state which could be designated from 1 January of the following year. Even the Patent Office may need to balance economy of procedure against the interests of the applicant, which may in turn necessitate a departure from the rules in favour of the applicant (cf. T 166/86 -"Separate set of claims/Henkel", OJ EPO 1987, 372, Reasons, point 7).
4. By according European patent application No. 89 124 087.1 the filing date 1 January 1990 Denmark has been included in this application. The designation fee paid in due time and refunded has been paid again. The designation is therefore valid. The designation in file 89 124 087.1 was never withdrawn. The separate - divisional - application for Denmark always existed only in an auxiliary or contingent capacity.
ORDER
For these reasons it is decided that:
1. The contested decision is set aside.
2. European patent application No. 89 124 087.1 is accorded the filing date 1 January 1990.