The patent results from a divisional application of EP 12731673/2 701 994.
The patent relates to a package of tobacco articles with an inner package fitted with a sealing flap.
Brief outline of the case
The proprietor appealed the revocation of its patent.
The OD found that the subject-matter of claim 1 of the granted patent (MR) as well as claim 1 of the AR 1-11 extended beyond the content of the earlier (parent) application, thus were infringing Art 76(1).
The patent proprietor’s AR 12 and 13 were not admitted into the proceedings.
The OD actually found that the subject-matter of claim 1 of the patent as granted extended beyond the content of the parent application as the term “fold line” in claim 1 as granted was broader than the term “linea di indebolimento”, translated as “line of weakness” in the decision under appeal, used in the parent application as filed.
The parent application was filed in Italian language and constitutes the earlier application as filed for the purposes of Article 76(1).
The board confirmed the revocation of the patent.
It held that the MR and AR 1-6 did indeed infringe Art 76(1).
What is of interest in the present case are AR 7-13. We will concentrate on claim 1 of AR7.
The proprietor’s position
In claim 1 of AR 7, the proprietor replaced, inter alia, all instances of the term “fold line” with the term “line of weakness“.
In other words, he replaced the term “fold line” having led to the objection under Art 76(1), by the correct translation “line of weakness“.
The OD regarded the replacement of the term “fold line” with “line of weakness” as having the effect of bringing a translation into conformity with an application as filed, as laid out in Art 14(2).
For the OD “the term ‘fold line’ could be corrected under R 14(2) into the term ‘line of weakness‘ in the seventh, eighth and eleventh auxiliary requests.”
The proprietor argued that it would be unfair to applicants with non-official languages that a divisional application could not be corrected in order to bring a translation into conformity with the originally filed parent application in a non-official language.
The proprietor argued that applicants with a non-official language were placed at a disadvantage with respect of applicants as native speakers of German, French or English. Those applicants could never “fall into the trap of choosing a non-official EPC language as the filing language and then file a divisional application directly in the language of the proceedings of the parent application”.
Claim 1 in AR 8-13 contained the same feature of a “line of weakness“.
The board’s position
For the board, the amendment in claim 1 of AR 7 was not allowable.
The board noted that the divisional application was filed directly in the English language. There is thus no application filed in “any other language” and no translation which could be brought into conformity with the application as filed.
The provisions of Art 14(2), second sentence, could therefore not not apply.
The considered that, according to the provisions of R 36(2), second sentence, the divisional application could have been filed in the Italian language as long as a translation into the language of the proceedings of the parent, i.e. English, was filed within two months.
If the divisional application had been filed in the Italian language with an English translation, this translation could have been brought into conformity with the original filing of the divisional application in the Italian language.
The board noted that the proprietor had the choice to file the divisional application and hence the patent in suit in either the English or Italian language. The proprietor was therefore not “penalised by this legal framework” as it was the proprietor’s own action in choosing to file in the English language which caused the provisions of Art 14(2), second sentence, to be unavailable.
The board concluded that claim 1 of AR7 did not meet the requirements of Art 123(2).
Since claim 1 of AR 8-13, contained the same feature of a “line of weakness“, they were not allowable either.
The present case shows the language in which the divisional is filed can play an important role when the parent has not been filed in an official language of the EPO.
If the parent is filed in a non-official language, Art 14(2), second sentence, only applies if the filing in of the divisional is as well filed in the original language of the parent.
In view of T 1472/19, commented on this blog, it is also not advisable to file a divisional application by reference to the parent. At least, when filing by reference, the problem of the language of filing would not occur, but there are other drawbacks.
When looking at published decisions of the BA, it is rather frequent to see problems under Art 76(1) with divisional applications. This ground for opposition under Art 100(c), i.e. Art 76(1), is often fatal for patents resulting from a divisional application. Sometimes, like here, Art 123(3) can also apply when there are amendments after filing.
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