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19/02/2010

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The EBA decision did not touch the right of parties to use any EPO language for arguments submitted to the EPO in written or oral form; only amendments need to be submitted in the language of the proceedings.

Neither did the EBA decision touch the right of the applicant to pick any EPO language as language of the proceedings by either filing the application in the desired EPO language, or when the application was filed in a non-EPO language, filing a translation into the desired EPO language.

The EBA decision mainly says that once the applicant has thus picked the language of the proceedings, he cannot change it e.g. by filing a translation into another EPO language. Also, the EPO has to use the language of the proceedings thus picked by the applicant.

The EBA has confirmed that a PCT application is equivalent to an EP patent application if the EPO is a designated office (which condition is always fulfilled as all PCT applications designate the EPC states with an indication that an EP patent is sought, see Rule 4.9 PCT). So, a PCT application does not become an EP application only upon entry into the national phase. In view thereof, it does not make sense to allow an applicant to file a translation upon national phase entry if the PCT application was already filed into an EPO language.

This equivalence between a PCT application and an EP application makes me wonder about the correctness of the EPO practice to only allow the filing of a divisional based on a PCT application once EP national phase fees have been paid and any necessary translation has been filed for the PCT application, as payment of fees and any necessary filing of a translation for a direct EP parent application are not preconditions for being able to file a divisional application based on that direct EP application.

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