English: the language of choice at the EPO?

The IPKat frequently comments on the babylonian nature of the European IP system, in particular the curious fact that many important ECJ judgments and opinions are not made available in English even though that would allow them to be easily read by, the IPKat strongly suspects, 100% of European IP professionals, to whom they are primarily aimed. The situation at the European Patent Office is a little less crazy, since there are only 3 official languages: English, German and French. This sometimes makes life slightly difficult for European patent attorneys but, since EPAs are expected to be fluent in at least one language and have a working knowledge of the others, there should be little to complain about.

The IPKat was therefore very interested, and a bit surprised, to see that a UK firm of patent attorneys have recently been instrumental in having a referral made to the Enlarged Board of Appeal in their attempt to get English, rather than French, accepted as their language of choice in proceedings before the EPO.

As well as accepting applications directly, the EPO acts as a 'designated office' under the international Patent Cooperation Treaty (PCT) system. PCT applications, although managed centrally by the clearing house of the International Bureau of WIPO in Switzerland, can be filed in many different languages and in many different places, because a PCT application can, as well as being filed at the IB itself, be filed at a national patent office acting as a 'receiving office', which then passes on the application to WIPO for processing. This system, a largely cobbled-together affair resulting from many and various compromises among the PCT member states (of which there are now 139), has a few resulting oddities. One of these is that the language in which the application is filed at a receiving office becomes the language in which the application is eventually published, provided this is one of the PCT languages of publication (Rule 48.3 PCT), which include the 3 official languages of the EPO. The usual result is that, once a request for a PCT application published in English, French or German is made to enter the European phase, the language of the proceedings at the EPO will be that language. Two parts of the EPC (using the current EPC2000, rather than EPC1973) make this reasonably clear. Firstly, Article 153(3) EPC states:

"The international publication of a Euro-PCT application in an official language of the European Patent Office shall take the place of the publication of the European patent application and shall be mentioned in the European Patent Bulletin."

Secondly, Article 14(3) EPC states:

"The official language of the European Patent Office 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 European Patent Office."

It is generally presumed that the language of the proceedings at the EPO for a PCT application published in English, French or German must therefore be the language of the PCT application. However, a possible chink in the armour is that little phrase highlighted above. Does this leave open the possibility for a PCT application filed and published in, for example, French to be prosecuted in English at the EPO if a translation is filed when the request for entry into the European regional phase is made? This is apparently what the attorneys in the case of J 8/07 are claiming, and the situation is apparently not as clear as might have been previously thought. [Please note that the IPKat is taking the liberty of translating the differently worded requirements of EPC1973 into EPC2000, to avoid further confusion.]

The PCT application in question was filed in French at the French patent office (INPI). INPI, acting as receiving office, only accepts applications in French. After being passed to the International Bureau, the application was then published as WO 02/081621. At the end of the international phase, a request was made by a UK-based attorney to enter the European regional phase. The attorney performed all the necessary steps to enter the regional phase, but also supplied an English translation of the patent specification, and made the following request:

"We wish the language of the proceedings to be in English. In this respect, we enclose an English language translation of the PCT patent application. This English language translation was prepared for parallel proceedings in Australia. [...] We submit that the language of the proceedings can be English since the EPC does not preclude this event on entry into the European regional phase. [...] [I]n accordance with J 18/90, we hereby request that in all written proceedings and decisions, the EPO uses English."

The examining division were having none of this, and continued writing to the representative in French, which the representative replied to in, of course, English. Finally, the examining division issued a decision, stating:

"1. Il n'est pas fait droit à la requête visant à substituter la langue de procédure française par l'anglaise.

2. Il n'est pas fait droit à la requête visant à ce que l'OEB utilise l'anglaise dans toutes les procedure écrites et décisions."

In brief, the examining division didn't think the applicant had the right to change the language of proceedings from one EPO official language to another. The representative then appealed this decision to the legal board of appeal, which issued their decision on 8 December 2008, a mere 2 years after that of the examining division, during which time EPC2000 entered into force. After considering the matter at length (and, of course, in French), the board decided that the question was a sufficiently important one for them to refer the following questions to the Enlarged Board:

"1° Lorsqu'une demande internationale de brevet a été déposée et publiée en vertu du Traité de coopération en matière de brevets (PCT) dans une langue officielle de l'Office européen des brevets (OEB), le demandeur peut-il, dès l'entrée dans la phase régionale devant l'OEB, déposer une traduction de la demande dans l'une des autres langues officielles de l'OEB avec l'effet que la langue de la traduction soit désormais considérée comme constituant la langue de la procédure qui doit être utilisée dans toutes les procédures devant les instances de l'OEB ?

2° Si la réponse à cette question est négative, les organes de l'OEB peuvent-ils utiliser dans la procédure écrite d'une demande européenne de brevets (ou d'une demande internationale entrée en phase régionale) une des langues officielles de
l'OEB autre que celle de la procédure utilisée pour la demande ?

3° Si la réponse à la deuxième question est positive, quels sont les critères à appliquer pour déterminer la langue officielle qui sera utilisée ?
En particulier, les organes de l'OEB doivent-ils faire droit à une telle requête émanant d'une ou des parties ?"

The IPKat has roughly translated the first question to the following:

"1 º When an international patent application is filed and published under the PCT in an official language of the EPO, can the applicant, upon entry into the regional phase before the EPO, file a translation of the application in one of the other official languages of the EPO with the effect that the language of the translation is seen as the language of the procedure that must be used in all the proceedings of the EPO?"

He is a bit stumped in trying to figure out what the second and third questions are asking exactly, but suspects that they are an attempt to figure out whether, if the official language is to be determined by the language of the PCT publication, a different official language can be used in EPO procedure anyway, and what criteria would apply for this.

The IPKat is not sure what the implications of the Enlarged Board's decision will be, if they decide to allow the official language to be changed in the way the representative in this case wants. It seems unlikely that many applications would be affected. He does, however, have some sympathy with the argument, put forward by the representative in this case, that the current state of affairs is discriminatory, since a Japanese applicant, for example, gets a free choice of which official language to use, whereas a US owner of a French subsidiary, having filed a PCT application in French, does not. Is this fair, or is it just one of those quirks of the international patent system we must live with?

The IPKat would welcome any further comments on this subject, particularly from those who may be more fluent readers of French than he is.