IMPORTANT NEWS REGARDING EUROPEAN PATENTS - FULLTEXT TRANSLATIONS TO BECOME OBSOLETE SOON IN MANY EPC STATES
October 2007
I. THE FACTS
On October 9, 2007, the French Senate voted on the so-called "London Agreement" which, when coming into force, will make the translation requirement for European Patents unnecessary in those countries which have ratified the Agreement.
In a long awaited step France decided to accept and ratify this Agreement. After the decision of the French Senate the door is now open for the abolishment of the translation requirement in several contracting states, namely in France, Germany, Iceland, Latvia, Liechtenstein, Monaco, Netherlands, Slovenia, Switzerland, and the United Kingdom.
The formal date of the Agreement entering into force is three months after the deposition of the ratification certificate by France. The actual date will probably fall into early 2008. We will inform you about the exact date as soon as it is known.
II. THE CONSEQUENCES
The London Agreement will have the effect that for all applications granted after the Agreement has come into force the translation OF THE CLAIMS ONLY will be sufficient for validating the European Patent in those states which have joined the Agreement. These will be many of the EPC member states, including Germany, France, and the UK. It can be expected that other countries will follow and sign the Agreement in the near future.
Since the translation costs are a significant fraction of the total costs of a European Patent, the effect of this change will be substantial. The costs for an average European Patent by this decision will decrease by up to 50 percent, in some cases by even
more, and the filing of a European Patent will become much more attractive compared to filing an application at a national Patent Office.
III. PRACTICAL RECOMMENDATIONS
In view of the prospect of the Agreement coming into force soon, it appears advisable for those applications where a Communication under Rule 51(4) EPC just has been issued or is about to be issued to delay the filing of the translation of the claims as far as possible. This may have the effect that the grant of the patent will be published after the London Agreement will have come into force, and thereby possibly rendering the translation of the whole specification unnecessary in those countries. To achieve a delay of the grant it could, e.g., be advisable not to respond to a Communication under Rule 51(4) EPC in time and, instead, to request further processing which delays the procedure by a further two months. The corresponding costs will be by far outweighed if the translations thereby become obsolete.
If you would like to have further information on this matter, please do not hesitate to let us know.
© BETTEN & RESCH 2007
