INFORMATION FROM THE CONTRACTING / EXTENSION STATES
DE Germany
Decision of the Federal Court of Justice dated 18 March 2010 - (Xa ZR 74/09)
Headword:
Hub gears II
Articles:
EPC Articles 65, 70; LIPC (German law on international patent conventions, as worded on 20.12.1991) Article II § 3
Keyword:
Translation of European patent – effects of incomplete translation
Headnote:
If a German translation of a European patent published in one of the other two EPO official languages has been filed in due time, Article II § 3(2) LIPC does not apply, and the patent takes legal effect in Germany even if omissions have been made in the translation. Such omissions are to be regarded as translation deficiencies which have the legal consequences laid down in Article II § 3(4) and (5) LIPC.
Summary of facts and submissions
The plaintiff seeks an order that the defendants should desist from infringement of its European patent 531 608, provide information and pay compensation. The patent in question was applied for on 19 February 1992 and published on 24 May 1995. It comprises eleven claims directed to hub gears for a bicycle. The language of the proceedings was English.
The plaintiff filed a German translation of the patent in suit with the German Patent and Trade Mark Office (DPMA) which published the latter under the number 692 02 657. The translation omitted the first section heading on page 2 of the specification ("Description"), lines 46 to 58 on page 11 and the first line on page 12.
The text omitted concerned gear operations in the second of two embodiments of the hub gears according to the invention.
At first instance, the court (Landgericht, LG) found in the plaintiff's favour. At second instance, the court (Berufungsgericht, BG) set that decision aside and dismissed the case. The plaintiff appealed the decision to the Federal Court of Justice. The defendants contested the appeal.
The appeal is admissible and well-founded. The case is remitted to the BG for a new hearing and decision, also on the costs of the appeal to the Federal Court of Justice.
Extract from the reasons
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I. The BG's reasoning was that because the German translation was incomplete, the patent had been void in Germany ab initio. Article II § 3(2) LIPC – applicable under Article XI § 4 LIPC (transitional provisions) because the patent in suit had been published before 1 May 2008 – required German translations of European patents to be of the version of the patent as granted. The provision's wording meant that a translation of the specification existed only if it was complete, i.e. contained all description parts in full. Its sense and purpose likewise required a complete translation: the purpose of the translation – to promote the dissemination and use of patent information in German, in the interests of innovation and competitiveness in German industry – was achieved only if it was complete. Furthermore, Article 69 EPC stated that the extent of the protection conferred by a European patent was determined by what was in the claims – always present also in German – and that the claims were to be interpreted on the basis of the full description and any drawings. The provision's legislative history too confirmed that the translation had to be complete; the reasons given for the law showed that German lawmakers regarded Article 65 EPC as empowering them to require applicants or patentees to file a translation of the entire specification. They had duly done so in the form of Article II § 3(1) LIPC. Further to Articles 68 and 70 EPC, the law consistently distinguished between missing as opposed to deficient translations. The legal consequences of Article II § 3(4) and (5) LIPC ensued only for deficiencies in translation content which was actually present. If, on the other hand, text parts were omitted, then the absent patent information had not been made available in German at all. So such omissions could not be subsumed under translation "deficiencies".
II. That does not withstand legal scrutiny. The BG erred in holding that the patent had no legal effects in Germany.
1. The translation requirement under Article II § 3(1) LIPC was deleted from German law on 7 July 2008, and no longer applies to patents for which mention of grant was published as from 1 May 2008. Under Article XI § 4 LIPC, it does however still apply to the patent in suit, which was published before that date.
2. Article II § 3(1) LIPC requires the patentee to file a German translation of its European patent specification with the DPMA within three months. Paragraph 2 says that if the translation is not filed in time or in a form which permits proper publication (or the fee is not paid in time), the patent is deemed void ab initio in Germany. Paragraph 3 states that the German translation is published by the DPMA. Paragraph 4 allows the patentee to file a corrected translation if the one published under paragraph 3 was deficient; the corrected translation is likewise published. Under paragraph 5, if the translation is deficient, a party using the invention in good faith in Germany can continue to do so if such use does not infringe the patent according to the deficient translation.
So Article II § 3 LIPC does not specify the legal consequences which ensue if the translation is incomplete. The lower courts disagree about how this question is to be answered. The BG's view – that those under paragraph 2 ensue – was also taken by Düsseldorf LG (InstGE 7, 136 = GRUR Int. 2007, 429; InstGE 11, 1 = Mitt. 2009, 234, with Sendowski dissenting; with limitations, Mitt. 2009, 469; idem Voß, GRUR 2008, 654 ff; Schulte/Püschel, PatG, 8th edition, Appendix I LIPC, point 20), whereas Mannheim LG has found differently (Mitt. 2009, 402 with Ehlers concurring; idem Kühnen, Mitt. 2009, 345).
3. This court cannot endorse the BG's view. Omissions are to be regarded as translation deficiencies with the legal consequences laid down in Article II § 3(4) and (5) LIPC (old version).
(a) The starting point is Article 65 EPC, allowing contracting states to require that European patent specifications be translated into their official languages. Under Article 70 EPC, however, the text of the patent in the language of the proceedings is the sole authentic text in any contracting state. Its paragraph 3 allows a contracting state to provide that a translation prescribed under its national law is the authentic text if it confers protection which is narrower than that conferred by the text in the language of the proceedings. In Germany, however, Article II § 3(5) LIPC provides merely that a party using the invention in good faith – relying on the extent of protection apparently conferred by a deficient translation – can continue to do so. In other words, discrepancies between the text as granted and as translated do not affect the validity of a European patent in Germany, or the extent of protection it confers there.
Contracting states which make use of the possibility under Article 70(3) EPC must allow corrected translations to be filed (see Article II § 3(4) LIPC). Even if the translation affects the extent of protection conferred, the corrected translation takes legal effect since the EPC does not distinguish between different kinds of deficiencies or their extent. So to make complete translations a further requirement for validity would be to distort what the EPC requires. Accordingly, and in line with Article 65(3) EPC, a European patent is deemed void ab initio only in the cases under Article II § 3(2) LIPC, i.e. if the translation is not filed in due time or form or the fee is not paid in time.
(b) This is also in line with the law's purpose as explained with regard to Article II § 3 LIPC in the reasons for the government's draft law (BT-Drucks. 12/632 = BlPMZ 1982, 46 ff): translations of European patent specifications are intended to promote the dissemination and use of patent information in German, in the interests of innovation and competitiveness in German industry, and to eliminate competitive disadvantages for German firms compared with foreign ones. If the aim of the translations is to inform, then logically any deficiencies they may have will not affect the scope of protection. The cited reasons for the law disavow any intention of providing, in accordance with Article 70(3) EPC, for the translation to be the authentic text if it confers narrower protection than the text of the patent in the language of the proceedings; on the contrary, the latter remains the authentic text, with the sole exception of Article II § 3(5) LIPC covering cases where an invention is being used in good faith on the basis of a narrower text in translation. It expressly reiterates that in case of infringement litigation, the patent's text in the language of the proceedings is the authentic one.
(c) In accordance with the sense and purpose of Article II § 3 LIPC, an incomplete translation does not trigger the legal consequences of its paragraph 2, provided the translation is filed in a form permitting proper publication and transposes – albeit with omissions – the specification into German from the language of the proceedings.
Neither incomplete nor deficient translations achieve the provision's purpose of informing the interested public. They both fail to disclose unequivocally all the information about the patent's technical teaching. Given the provision's sense and purpose, whether the deficiencies are errors or omissions matters little. For information purposes, omissions are not necessarily any worse than translations which distort the meaning. Even if essential parts of a translation are deficient, a corrected version can be filed. The lawmaker has decided that this takes sufficient account of party interests. It does not matter how many mistakes there are and whether they affect comprehension; that would presuppose, in individual cases, detailed scrutiny for which the lawmaker declined to make provision. And if even serious translation errors can be rectified by filing corrections, the same must hold true for omissions, which are likewise impediments to establishing what the patent says. Furthermore, in borderline cases – such as missing words or phrases on the one hand and gross distortions of the original English or French text on the other – it is hardly possible to draw clear distinctions between errors and omissions.
Legal certainty is ensured by providing that the claims in the language of the proceedings remain authentic. Any additional need to protect the legitimate expectations of individuals relying on a deficient or incomplete translation which misleads them as to a patent's subject-matter or extent of protection has been met by providing for rights of further use. That duly balances the competing interests at stake, irrespective of whether the information about the patent is deficient or incomplete.
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DE 1/11