EP 3 005 983 B1 relates to an electric handle for delivering and placing an implant, e.g., a prosthetic valve or a stent. It was originally filed in Chinese language under the PCT.
The inner tube 3 is fixed 50 and the outer tube 2 is moveable 40. The placement of an implant occurs over the relative movement of the inner and the outer tube.
Brief outline of the case
The OD decided that claim 1 as granted infringed Art 123(2). AR were not admitted and hence the patent was revoked.
The proprietor appealed the revocation and the board decided to remit the case for further prosecution.
The whole case revolves around th correct translation from a feature of a claim from Chinese to English.
The proprietor’s point of view
The term “lián dòng” in Feature M14 of claim 1 of the MR mainly meant a common movement of several things. A linkage between these things was implicitly included in the term “movable together with”. Therefore, claim 1 did not contravene Article 123(2).
The term “connector for the implant (3b)” in Feature V5 of claim 7 did not add anything to the claim compared to the expression “implant fixing head”.
The description did not contravene Article 123(2) EPC.
The opponent’s point of view
Feature M14 of claim 1 of the MR went beyond the content of the application as originally filed because the words “movable together with” had a different meaning than the original expression “lián dòng”.
The term “connector for the implant (3b)” in Feature V5 of claim 7 went beyond the content of the application as originally filed. The Chinese wording in claim 7 as originally filed meant “implant fixing head”.
Several incorrect translations in the description went beyond the content of the application as originally filed.
The board’s decision
The translations filed by the proprietor understand the term “lián dòng” to mean “movable together with”.
In the translations filed by the opponent, it is interpreted as “linked to”.
The term “lián dòng” is not mentioned in the description of an embodiment but it is used only in the claim. Therefore, the board held that it cannot be excluded that the claim wording as originally filed had a meaning which deviates from the description.
The declaration of one translator, for the opponent, explains that the term “lián dòng” contains both meanings of “linked” and “movable”. In the embodiment described in paragraphs [0036] and [0037] and shown in Figure 1 of the patent, it was not the complete transmission mechanism but only the driving nut which was movable together with the outer tube anchor. Since the remaining components of the transmission mechanism were fixed, or only rotating only, it was concluded that the translation “linked to” was more appropriate that “movable”.
However, it is not explained in said statement why the aspect of motion could or should be omitted, although it is said to be included in the meaning of “lián dòng”.
The declaration of another translator, for the opponent, explains that based on his research, in the etymological meaning of “lián dòng” “the correlation of object’s motion or state are emphasized.”
However, in a further document, for the opponent, it is shown that the meaning “linkage” is also included in the term “lián dòng”.
The board concluded that the term “lián dòng” means that several objects are linked in a way that they can be moved together. Both aspects are present at the same time. “Linked” and “movable” and are not two alternative meanings of “lián dòng”, but two aspects of the same term.
The opponent argued that the movement aspect of “lián dòng” did not refer to a common movement but to a movement in general, as “lián dòng” contained the meanings of “linked” and “movable”, instead of “movable together with”.
However, the movement aspect of “lián dòng” refers to a common movement of related things. Since the aspect of a “linkage” is present in “lián dòng”, the movement aspect cannot be considered in isolation, but only as the common movement of several things. This corresponds to the English expression “movable together with”
For the board, a common movement of several components is not only possible in situations in which these components are mechanically linked to each other.
The board therefore concluded that a “linkage” is not implicitly included in the term “movable together”.
The current wording, according to which the transmission mechanism is “movable together with the outer tube anchor”, has broadened the subject-matter of claim 1 of the MR and, therefore, the subject-matter of this claim goes beyond the content of the application as originally filed.
The board held that claim 7 of the MR did indeed infringe Art 123(2), but not the description.
Reasons for the remittal
The assessment of the term “movable together with” by the board differed from the one applied by the OD. Therefore, the OD’s assessment that claim 1 of AR 1b prima facie contravened Art 123(2) did no longer apply. On the contrary, claim 1 of AR 1b prima facie overcome the objections raised under Art 123(2) against claim 1 of the MR.
Due to this change in the circumstances of the appeal case, the non-admittance of AR 1b by the OD is set aside.
Although AR 1b2 was filed during the OD in appeal, deletion of claims 7-9 removes any objection and the case could thus be remitted to the OD.
Comments
Filing from China are increasing steadily as prior art in Chinese language is more and mre cited in search reports of the EPO or by opponents. .
We will thus be faced in the future with more translation problems as we would like.
It seems also important, and this is independently of the filing language, that the same wording is to be found in the description and in the claims. This was part of the problem here.
It is difficult to see whether the translators used by the opponent of the proprietor were sworn translators. But filing a succession of translations should be avoided as it only confuses the issues.
It should therefore be possible to request that the party contesting a translation to file a sworn translation which would then be adopted by all parties and the EPO.
https://www.epo.org/en/boards-of-appeal/decisions/t220354eu1
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