The patent relates to a method for remote diagnosis of a lift assembly and lift assembly for executing the method.
Brief outline of the procedure
The OD decided that claim 1 as granted lacked N over D2/D2a=CN 101 291 866 (Not in ESR) and to maintain the patent in amended form according to AR2.
Both proprietor and opponent appealed the decision.
The proprietor requested as MR rejection of the opposition or maintenance according to AR 1-8.
The proprietor requested not to admit a new machine translation of D2a’=CN 101 291 866. The board agreed with the proprietor.
The opponent requested revocation of the patent.
The board considered the method being of technical nature, and hence not falling under the prohibition under Art 52(2).
The ground of opposition under Art 100(b) did not prejudice the maintenance of the patent.
The board found that claim as granted was novel over D2/D2a. this was however not consigned in the operative part of the decision.
During OP the opponent filed an objection of lack of N based on D1=US 2004/0094366 (1st X in the ESR). The board considered that the objection was properly substantiated, which did however not mean that it was persuasive.
Eventually the board set aside the decision of the OD and remitted the case for further prosecution.
The case is interesting in view of the submission of multiple machine translations of D2.
The late filing of a new machine translation
The opponent’s position
During OP before the board, the opponent submitted a new machine translation D2a’.
The opponent argued that, by analogy with Art 14(2), an improved translation could be filed at any time throughout the proceedings.
The opponent argued that D2 and D2a were sufficiently comprehensible for itself and the opposition division and that the newly submitted, improved machine translation D2a’, because it was based on newer technology, was a favour for the patent proprietor and the board.
The board’s position
For the board, the submission of an amended translation of a citation constitutes an amendment of the opponent’s submissions. If admitted, the patent proprietor and the board would have to deal with amended or potentially entirely new facts for which they could not prepare before the OP.
According to Art 13(2) RPBA20, amendments to a party’s appeal submissions after service of the summons to oral proceedings are in principle disregarded, unless the party concerned has shown valid reasons that exceptional circumstances exist. However, this did not apply in the case at hand.
The board held that filing an improved machine translation was not a valid reason implying exceptional circumstances.
The fact that the machine translation D2a was difficult or even impossible to understand in places must have been known to the opponent from the beginning.
Moreover, the proprietor criticised the poor quality of the translation in its statement of grounds of appeal, so that at least from that point on there was enough time and, above all, reason to submit an improved translation. The board sees no reason why the opponent waited until the OP to do so.
With regard to the argument that, by analogy with Art 14(2), an improved translation could be filed at any time during the entire procedure, the board did not see any applicability of this provision to the specific facts of the case.
Art 14(2) explicitly refers to European patent applications filed in a non-official language, for which special requirements apply. However, D2 and D2a are evidence submitted by the opponent in support of its arguments, so that a direct application of Art 14(2) is not possible.
Since the aforementioned Article thus concerns a completely different subject-matter, an analogous application to the situation of filing an improved translation of evidence at a late stage of the proceedings cannot be considered.
Moreover, it must be borne in mind that Art 14(2) is also intended in particular to compensate for disadvantages suffered by applicants who did not file their original application in one of the procedural languages of the EPO. Such a disadvantage to be compensated for does not exist with regard to the filing of evidence, since it is equally incumbent on all parties to opposition proceedings to decide on the filing of the documents deemed appropriate in each case and thus also to ensure the timely filing of any necessary translations of sufficient quality.
It is therefore clear that the filing of an improved translation of evidence does not have to be accepted at every stage of the proceedings, but that a decision must be taken on its admission depending on the specific stage of the proceedings, as expressly provided for evidence in Art 114(2). Since there is no explicit provision for evidence, for this reason alone, an analogous application of Art 14(2) cannot be considered.
Comments
The decision is interesting as it makes clear that Art 14(2) does not apply to evidence submitted in opposition. It is exclusively reserved to applicants. If Art 14(2) does not apply for filing an improved translation of evidence, Art 14(4) does certainly not apply.
If the original machine translation is of poor quality, it is then better to file, immediately after the quality of the machine translation has been queried, a man-made translation, preferably certified.
As the decision of the OD has been set aside and the case remitted for further prosecution, there appears to be a new opportunity for the opponent to file an improved translation of D2 should he be still of the opinion that D2 is N destroying.
One could argue that the operative part of the decision the decision does not say anything about the N of claim 1 as granted over D2, hence the filing of a new translation, preferably man-made and certified, should, in principle, be admitted.
Some case law on the quality of machine translations
As non-exhaustive examples the following decisions can be quoted:
In T 428/15, the lack of novelty with respect of D3 was not upheld by the Board in view of the bad quality of the machine translation. A man-made translation was not filed by the opponent.
In T 2187/14, the board did not see it as appropriate to allow a party to file numerous machine translations throughout the procedure until it comes up with one that conveys the nuance that supports its case. A certified translation should have been filed at the earliest opportunity.
In T 1683/18, the board admitted a man-made translation filed with the statement of grounds of appeal of the opponent.
In T 995/15, the filing in appeal of the English translation of document D28, i.e. D28a, filed by the opponent before the OD, appeared to be admissible.
https://www.epo.org/law-practice/case-law-appeals/recent/t191795du1.html
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