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A Closer Look at the London Agreement



by Charl Goussard, NAIP Legal Research

It's no secret that no matter where you apply in the world, patents are time and cash consuming! However, due to a unique, two-stage patent system and multiple national languages, those wishing to patent in Europe require even more time and somewhat deeper pockets.

At the European Patent Office (EPO), patents are prosecuted in one of three official languages: English, French or German. In the past, however, to be validated in a European Patent Convention (EPC) member state, the text of the patent (the specification) had to be translated into that country's national language. Considering that the EPC currently consists of 35 member states, each with its own official language, translating patents could become a huge burden! Some speculate that translation cost can easily run up to 40% of the total patent cost.1

Apart from being time and cost consuming, the need for translated patents seems to be superfluous. Practice has shown that whenever a patent is infringed, the parties as well as the court involved exclusively refer to the text of the patent as granted by the EPO – the translated version is left in the dark!2 Furthermore, since patents are usually granted three to five years after filing, the translations seldom achieve the purpose of informing others of new technology - by the time the translated version are published, the technology is already well known.


Time for a change: The London Agreement

Recognizing the need for a cheaper, more streamlined system, some EPO member states adopted the London Agreement. The rationale for the London Agreement is to cut costs in the post-grant phase of European patents, such as translation costs, publication fees as a result of fewer translations, and patent attorney fees.

Signing of the London Agreement is optional, and since its entry into force on May 1 2008, 14 EPC member states have ratified the agreement.


Implementation

The London Agreement differentiates between two types of EPC member states: those who have English, French or German as an official language (Group I) and those who don't (Group II).



All of the above countries still require that the claims of the European Patents be translated into their national language for validation.

Countries falling within the first group will no longer require a translation of the patent specification for validation of the patent in that country. Remember that it is still a pre-grant requirement that European patents’ claims be translated into English and French when the language of the application is German – and vice versa!

Countries falling within the second group will select one of the three official EPO languages as the required language in which European patents will have to be translated for validation. However, these countries retain the right to require a translation of the patent claims into one of their official languages.


Cost Reductions Scenarios

The trimming down of translation cost after implementation of the London Agreement depends on the countries designated by the patentee. The most significant cost reduction occurs where designated countries have signed up to the London Agreement.

From our explanation above we can conclude that the London Agreement generally has a cost saving effect. The countries designated by the patentees will however determine the exact extend of cost saving as a result of the London Agreement.

The following charts, aided by examples, are helpful references for the various scenarios one could encounter under the London Agreement.


General Purpose Chart





For the purpose of our examples, we assume that the language chosen by the applicant for prosecution at the EPO is English.



Example 1: Designated to the UK, France and Germany






Example 2: Designated to the UK, France, Germany, Norway and Finland






Example 3: Designated to France, Germany, Netherlands and Spain


*Translation of claims only into Dutch (The Netherlands have agreed to the London Agreement and specified English as their language of preference).




Example 4: Designated to France, Germany, Belgium and Austria


Upon grant of patent by EPO – translation of patent specifications into French and German for Belgium and Austria respectively – both have failed to join the London Agreement.


1,2 http://www.epo.org/topics/issues/london-agreement.html

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