EP 3 418 372 B1 relates to a culture apparatus and a method of controlling the culture apparatus.
Brief outline of the case
The OD decided maintenance according to AR7.
The board confirmed maintenance according to AR7.
The MRn was rejected by the OD for infringement of Art 123(3), and the board confirmed this decision.
The case is interesting in view of the new MR filed in reply to the opposition.
The proprietor’s point of view on the MRn
The amendments made to claims 1 to 3 were a correction allowable under Art 14(2) and did not unallowably extend the protection of the patent.
The application as filed encompassed both heater locations, at the inner and at the outer surface and the terms were used synonymously.
The skilled person, in view of the contradiction between claims 1 and 2 as granted, understood that the location in the described embodiments was meant.
Moreover, the term was not restricted to the inner surface of the inner case but meant all internal surfaces of the culture apparatus from the perspective of a user. In addition, the wording “provided to” did not limit the application of the heater but rather defined the application of heat.
The opponent’s point of view on the MRn
The amendments made to claim 1 resulted in an extension of protection as its subject-matter was not restricted but different to the granted version.
The board’s decision
The Euro-PCT application underlying the current patent is based on international application PCT/JP2017/010678, published as WO 2017/169850, which was originally filed in Japanese, and therefore not in an official language of the EPO pursuant to Art 14(1).
A translation into English was filed pursuant to Art 14(2), a provision which under Art 153(2) also applies to this Euro-PCT application not originally filed in an EPO official language. This translation was published as EP 3 418 272 A1 and encompassed, inter alia, the following wording of claim 1:
“one or more heaters provided to one or more inner surfaces of the inner case and an inner wall surface of the heat-insulated door to heat the culture space”
In the MRn this was changed in:
one or more heaters provided to one or more inner rear surfaces of the inner case and a rear surface of an inner wall surface of the heat-insulated door.
Corresponding amendments were carried out in the description.
The wording “one or more heaters provided to one or more inner surfaces of the inner case”, in claim 1 as granted, was not in conformity with the embodiments of the patent, since no heaters on the inner surface of the inner case were described anywhere in the disclosure.
In the MRn, the translation was brought into conformity with the original Japanese text according to the corrected translation.
The board held that no correction under Art 14(2) was possible.
Art 14(2) applies to the patent application. Therefore, the second sentence of Art 14(2) refers to an act bringing the patent application documents into conformity with the application as filed, for example, if evidence is provided that the translation filed is not in conformity with the original text of the application, cf. Rule 7.
Contrary to the proprietor’s assertion, this provision thus provides no basis for bringing the wording of the patent as granted into conformity with the original text.
As also explained in a similar case in T 700/05, Reasons 5, Art 70(1) provides that the text of a European patent in the language of the proceedings must be the authentic text in any proceedings before the EPO and Art 70(2) provides that if the European application was filed in a language which is not an official language, that text must be the application as filed within the meaning of the Convention.
A change made to the text of a European patent is an amendment to this text within the meaning of Art 123.
The board also referred to T 516/12, Reasons 1.6, and T 700/05, Reasons 5.3. In both of these cases, in contrast to in the case in hand, the corrected term was a restriction compared to the term as granted.
In T 1585/12, Reasons 3.2, and T 1185/23, Reasons 2.6 and 2.7, it was found that the corrected translation did not change the subject-matter claimed.
The corrected text of the application as filed serves as the reference point for determining whether the subject-matter of the patent extends beyond the content of the application as filed.
The board held that the amendments in the MRn extend the protection of the patent since the location of the heaters is, where amended, inverted from the inner to the outer surface of the case and the door, thus creating an aliud.
Comments
From the decision, it can be taken that, when amending a translation into an official language of the EPO in opposition proceedings, two aspects have to be considered.
First is the amendment to the description, then the amendment to the claims.
Whilst an amendment to the description appears generally possible under Art 14(2), when the granted claim is amended, it has to be checked first whether the requirements of Art 123(2) are fulfilled, and if this is the case, whether the requirements of Art 123(3) are fulfilled.
After amendment of the translation, the authentic text to be taken into account for applying Art 123(2) is the amended translation, cf. Art 70(2)+Art 14(2). .
When the corrected translation leads to a limitation of the subject-matter of the claims, then the correction is allowable.
However, when the corrected translation leads to a broadening of the subject-matter of the application or of the claims, then the correction is not allowable. Only amending the description, but not amending the claim, or vice-versa introduces a discrepancy between claims and description. Such a discrepancy ought to be corrected in view of the decisions following G 1/24.
It is thus of utmost importance for applicants to carefully check the translation filed when filing an application at the EPO in a non official EPO language. This applies the same way to a Euro-direct or to a Euro-PCT application.
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