What language to use before the EPO?
This article was included in our Summer 2010 edition of Inside IP magazine.
A European patent application is only prosecuted by the EPO if the specification is in, or has been translated into, one of the EPO official languages: English, German and French. During prosecution, it is not possible to change the language of the specification into another EPO official language, and amendments must be filed in the same language as the specification.
The language in which the EPO communicates to the applicant (also called the official language of the proceedings) is determined by the language of the patent specification.
In a recent case, an applicant attempted to change the language used both in the specification and as the official language of the proceedings of a Euro-PCT application from French to English. The applicant filed an English translation of the patent specification (originally filed and published as a PCT application in French) upon entry into the European phase, and requested the EPO to communicate in English and refer to the English specification, where necessary. These requests were refused. The applicant appealed, and the responsible EPO appeal board referred the case to the EPO Enlarged Board of Appeal (EBA).
The EBA held in decision G 4/08 that, when a Euro-PCT application has been filed and published under the PCT in one of the EPO official languages, the specification must remain in this original language after entry into the EPO, and that this language also automatically becomes the official language of the proceedings and cannot be changed.
Thus, applicants with a priority application in French or German who wish to manage their patent prosecution before the EPO in English must file a PCT application or a ‘direct’ European application in English, within the 12 month priority period.