INFORMATION FROM THE EPO
No. 19/99 - Article 88(1) EPC, Rule 38(4) EPC - Filing of a translation of the previous application or a declaration under Rule 38(4) EPC
When a European patent application claims the priority of a previous application, the language of which is not one of the official languages of the European Patent Office1, the applicant must file either a translation of the previous application in one of the official languages or a declaration2 that the European patent application is a complete translation of the previous application ("priority application")3. Such a "declaration" is acceptable only if the text of the European patent application is a complete translation of the previous application. Either one must be filed within a time limit to be set by the European Patent Office, but at the latest within the time limit under Rule 51(6) EPC.
I. Complete translation
1. The expression "a complete translation of the previous application" in Rule 38(4) EPC is to be understood as meaning that the text of the description, the claims and, when applicable, the words in the drawings of the European patent application at the date of filing was a full translation of the corresponding texts/words of the priority application. For an international patent application for which the European Patent Office acts as designated Office or elected Office, the text of the application as filed4 is decisive (see Article 150(3) EPC).
2. The text of the European patent application only qualifies as a "translation" within the meaning of Rule 38(4) EPC if nothing is added or omitted vis-à-vis the text of the priority application, eg there should be no additional claims or examples or particular embodiments. If the various parts of the priority application are as such identical, but arranged differently in the European patent application (eg claims are presented at the end, whereas in the priority application they are at the beginning), or different type of references (eg Arabic rather than Roman numerals) are used, the declaration may still validly be submitted. However, if changes have been made within the parts of the application (eg different order of claims, added reference signs5), or if sections of the application (eg listing of components, section headings and words in the drawings) are not identical to those in the priority application, a declaration is not acceptable.
3. Where a European patent application claims multiple priorities it will only in exceptional cases be a translation of the full text of one of the priority applications6. In such cases, it is possible to file a declaration in respect of the identical priority application. As to the other priority application(s), a complete translation is required.
4.Where a declaration is filed and the European patent application is not a complete translation of the priority application, this represents a deficiency which may lead to the loss of priority rights.
II. Form and content
1. The declaration can also be made on behalf of the applicant by his professional representative. While no specific wording is prescribed, the declaration must state in a clear and unambiguous way that the European patent application is a complete translation of the priority application. Certification of the declaration is not necessary.
III. Time limit for filing the translation or declaration
1. The required translation of the priority application or the declaration must be filed within a time limit to be set by the EPO but at the latest within the time limit under Rule 51(6) EPC.
2. The declaration may be made on filing the application, by crossing the appropriate box which will be included as from July 1999 in the Request for Grant form7.
3. An invitation to file the required translation or declaration will always be issued if the translation of the priority application is required for the examination as to whether the priority claimed is effective (Guidelines C-V, 3.2). Otherwise, such an invitation will be issued together with the communication pursuant to Rule 51(6) EPC.
4. If the required translation or declaration is not correctly filed in due time, an invitation to remedy the deficiency will be issued in accordance with Rule 41 EPC. Failure to remedy the deficiency leads to the loss of the right of priority for the European patent application in accordance with Article 91(3) EPC because the requirements of Article 88(1) EPC have not been met. Since the failure results only in the loss of the right of priority, the option of further processing is not available (Article 121(1) EPC). The only legal remedy is restitutio in integrum in accordance with Article 122 EPC.
IV. Divisional applications
1. With regard to divisional applications, priority documents and the required translations (or declarations) need be filed only for those priorities claimed in the parent application to which the subject-matter of the divisional application relates (Guidelines A-IV, 1.2.3). If the divisional application is a complete translation of one of the priority applications from which priority is claimed in the parent application, it is sufficient to file the priority document and a declaration8.
No separate filing of the translation of the priority application or the declaration is required for the divisional application if the said document was in the file of the parent application, at the latest when the divisional application was filed. If the divisional application is filed before the relevant document is filed in the parent application, the applicant can, within the time limit for filing the relevant documents in the divisional application proceedings, also inform the European Patent Office that he has in the meantime submitted these documents in respect of the parent application (Guidelines A-IV, 1.2.3).
1 English, French, German.
2 Guidelines for Examination in the European Patent Office, C-V, 3.2.
3 The translation or declaration is also required when a copy of the previous application is included in the file by the EPO (Decision of the President of the European Patent Office dated 22 December 1998 on the filing of priority documents, OJ EPO 1999, 80).
4 And not the (possibly amended) text as on entry into the regional phase before the European Patent Office.
6 If, for example, the first priority application relates to subject-matter (A) while the second priority application relates to subject-matter (A+B), the text of the subsequent European patent application might be identical to the second priority application.
7 Section 25a of EPA/EPO/OEB Form 1001 07.99.
8 For example, the parent application claims priority from applications A and B. The divisional application is identical to application B.