J 0018/96 (Filing date) 01-10-1997

1. The appeal is admissible. True, the appellant did not challenge the EPO's finding that his application was deemed withdrawn, and this is therefore now final. However, the contested decision has adversely affected him, by refusing him a filing date and priority document. It prevents him from exercising his priority right, which under Article 66 EPC is conferred only by a European patent application "which has been accorded a date of filing". In the case of subsequent filings in the countries party to the Paris Convention, a certificate from the original receiving office may be required for priority purposes (Article 4D(3) Paris Convention). Without a priority document, therefore, the priority claim may not succeed.

2. The first question at issue is whether application documents containing a description in English and a claim in German can be given a filing date under Article 80 EPC. The Receiving Section said no; description and claim had to be in the same language.

2.1 The appellant, for his part, argues that Article 80(d) EPC does not say that description and claims have to be in a single language. Here however he is overlooking the connection between Article 80(d) EPC and the other provisions governing EPO languages, notably Article 14 EPC.

2.2 Article 14 EPC lays down that European patent applications must be filed either "in one" of the EPO official languages (Article 14(1) EPC) or "in an" official language allowed under Article 14(2) EPC. In the former case - the only one relevant here - the EPO official language (singular!) in which the application is filed is also that used in all subsequent EPO proceedings (Article 14(3) EPC). It is clear from this that European patent applications must be filed in a single language.

2.3 To be fair to the appellant, however, this principle does not apply unreservedly to the documents as filed. Paragraph (d) of Article 80 EPC refers only to the language used for the description and the claims, not the other application documents (see T 382/94 of 17 April 1997, Reasons points 5 and 6). The description and one or more claims under Article 80(d) EPC are thus to be regarded as those parts of the application which determine the language of the proceedings under Article 14(3) EPC (see J 7/80, Reasons point 4, OJ EPO 1981, 137). Allowing them to be filed in different official languages would make it impossible to determine the language of the proceedings from the documents as filed, which would be in direct conflict with Article 14(3) EPC. The appellant's arguments, based on purely grammatical considerations and linguistically by no means the only possible interpretation of Article 80(d) EPC, ignore this aspect.

2.4 From the foregoing, the board concludes that filing the description and a claim in two different official languages does not comply with Article 80(d) EPC. In the present case, therefore, the documents filed were in breach of Article 80 EPC.

3. The appellant also cites legitimate expectations, and says the Receiving Section did not follow the Convention when examining his application on filing.

3.1 The conduct of examination on filing is laid down in Article 90 and Rule 39 EPC. First, the Receiving Section has to examine whether the application satisfies the requirements for the accordance of a date of filing (Article 90(1)(a) EPC). If so, it then examines whether the filing and search fees have been paid and, where necessary, whether the translation of the application into the language of the proceedings has been filed (Article 90(1)(b) and (c) EPC).

That examination on filing must follow the above sequence is clear from the legal consequences arising if deficiencies are noted. If no filing date can be accorded, and the deficiencies noted are not remedied in due time, then the application is not dealt with as a European patent application (Article 90(2) EPC). In such a case, no valid application actually exists. If however the deficiency is non-payment of fees or failure to file the translation, then the application is deemed withdrawn (Article 90(3) EPC) - which presupposes that it was legally valid in the first place. Consequently, before the Receiving Section performs its checks under Article 90(1)(b) and (c) EPC it must first satisfy itself that a filing date can be accorded (see Guidelines for examination in the EPO, A-II, 4.8).

There is however a further reason why the above sequence has to be followed: the need to inform the applicant as quickly as possible of any deficiencies which prevent him from being accorded a filing date under Article 80 EPC, so that he can remedy them and get one after all. To this end, the Convention provides (in Rule 39 EPC) for a special procedure for pointing out that the application fails to meet the requirements of Article 80 EPC.

3.2 It is common ground that in the present case the Receiving Section raised no objections under Rule 39 EPC, despite the fact that one of the requirements under Article 80 EPC for according a filing date was not fulfilled. Instead it notified the appellant under Rule 85a(1) EPC of his failure to pay the filing and search fees in time. But this - and the loss of rights subsequently noted under Rule 69(1) EPC - presupposed a validly filed application (see point 3.1 above). However, even after noting, on 12 February 1996, the appellant's failure to comply with one of the filing-date requirements under Article 80 EPC, the Receiving Section still did not give him an opportunity under Rule 39 EPC to remedy that deficiency. Instead it told him he could no longer do so, the proceedings having now been terminated following non-payment of fees.

3.3 In so doing, the Receiving Section disregarded the provisions governing examination on filing, and contradicted itself. The result was to deprive the appellant of any opportunity under Article 90(2) and Rule 39 EPC to remedy the deficiencies which stood in the way of a filing date.

The appellant's failure to pay the filing and search fees for his application is not the issue: whether a filing date can be accorded depends neither on payment of fees (Article 80 EPC) nor on the subsequent fate of the application (Article 66 in conjunction with Article 87(3) EPC). Nor should the fact that the Receiving Section was rather late to notice the deficiencies have stopped it from giving the appellant an opportunity to put them right.

The Receiving Section thus committed a procedural error such that the contested decision must be set aside.

4. But this still leaves open the question of whether, in the present case, a filing date under Article 80 EPC was established, and - if so - when.

4.1 The Receiving Section confirmed 2 February 1995 as the date on which it received the application documents, and unreservedly gave the appellant an application number. During examination on filing, it failed to detect the problem of two different languages in the description and the claim. However, this on its own does not mean that a filing date has been validly accorded; that date can be reviewed at any stage during European examination proceedings if this needs to be done in order to clarify a point of law (see Bossung, in "Münchner Gemeinschaftskommentar", 8th edition, Article 80 EPC, point 115 ff).

4.2 A further aspect in the present case is that by issuing the communications under Rules 85a and 69 EPC the EPO for over a year left the appellant in the justified belief that his application had been validly filed, and then expressly ruled out any possibility of remedying the deficiency under Article 90(2) and Rule 39 EPC. It thereby prevented him from putting the application documents right - which he could have done simply by replacing the German claim with an English one. Had the

Receiving Section acted correctly, he could doubtless have done so very soon after filing the application.

It must also be borne in mind that the deficiency in the documents as filed did not involve the identity of the applicant, disclosure of the invention, or the applicant's legal right to a patent, but only a purely formal matter: failure to use a single official language for both the description and claim. The documents as filed thus fulfilled the basic requirements for establishing a filing from which priority can be claimed (see Bossung, loc. cit., point 68 ff).

Lastly, because the application was not published the public was never aware that EPO proceedings were under way (Article 128(1) EPC), and is therefore not directly affected by their outcome.

4.3 In view of the foregoing, the board concludes that the appellant must be protected in his legitimate expectation that the application he filed on 2 February 1995 was accorded that date as its filing date. He is not to be disadvantaged by EPO conduct which was misleading and partly irregular. In so finding, the board is following its established case law on the protection of legitimate expectations (see, for example, J 3/87, OJ EPO 1989, 3; J 14/94, OJ EPO 1995, 824).

The present application, now no longer pending, must therefore be accorded the filing date of 2 February 1995. This must be certified in the priority document requested.

5. Although the present appeal is being allowed inter alia because of a procedural error, equity does not require that the appeal fee be reimbursed. By filing the documents as he did, the appellant himself gave rise to the flawed procedure before the Receiving Section.