Patent an invention: patent registration

The London Agreement, which was signed on October 17, 2000 by various contracting states of the European Patent Convention, entered into force on May 1st, 2008.

In order for a European patent to be granted, the applicant must provide the European Patent Office with the translations necessary for that patent to be published with a version of the claims in English, German and French, the description of the granted patent only being available in the language of the procedure.

Formerly, in order for a European patent to enter into force in a contracting state once granted (with the exception of Luxembourg and Monaco), a translation into an official language of that state had to be filed at the Patent Office of that state (typically within a period of three months from the date of grant) unless the European patent was granted in one of those official languages of that state. Thus, according to the former rules, in order for a European patent granted in French to enter into force:

-       in France, Belgium, Switzerland, Luxembourg or Monaco, no formality was necessary,

-       in the United Kingdom, a full translation into English had to be filed at the United Kingdom Patent Office,

-       in Germany, a full translation into German had to be filed at the German Patent Office,

-       in Italy, a full translation into Italian had to be filed at the Italian Patent Office,

-       etc.

In turn, for a European patent granted in English or in German to enter into force in France it was formerly necessary for a full translation of the patent into French to be filed at the French Patent Office.

The effect of this Agreement is, at least, that each of the contracting states of the European Patent Convention which has in addition ratified the Agreement:

• waives the requirements for translation into its official language (or into one of its official languages) when that state has an official language in common with the European Patent Office, i.e. English, German or French,
• otherwise, waives the requirement for a full translation into its official language (or one of its official languages),
• if the European patent was granted in one of the official languages of the European Patent Office prescribed by that state, or
• if a translation of the European patent into that prescribed official language is filed at the Patent Office of that state within the prescribed period.

The contracting states of the European Patent Convention which in addition have ratified the London Agreement are, as of April 28, 2008:

-       Croatia,
-       Denmark,
-       France,
-       Germany,
-       Iceland,
-       Latvia,
-       Liechtenstein,
-       Luxembourg,
-       Monaco,
-       The Netherlands,
-       Slovenia,
-       Switzerland,
-       The United Kingdom.

Included among these states are states which were not contracting states until recently, but which accepted the coming into force of a European patent in their territory, without a requirement for a full translation.

Generally, the contracting states of the European Patent Convention, which have in addition ratified the London Agreement but which do not have an official language in common with the European Patent Office, have prescribed English as the language into which they accept European patents to be granted or translated and in addition require a translation of the claims into the language of their country.

The effect of the London Agreement as of May 1^st, 2008 for a European patent granted in French is in particular, contrary to the former situation, that:

-       it is no longer necessary to provide a full translation into English or German in order for the patent to enter into force in the United Kingdom or in Germany,

-       it is no longer necessary to provide a translation of the description into Danish, Dutch or Croatian in order for the patent to enter into force in Denmark, the Netherlands or Croatia provided that a translation of the claims into the language of the corresponding country and a translation of the description into English are provided within three months of the grant,

For the other states, nothing changes in practice.

In turn, in the case of a European patent granted in English, it is no longer necessary to prepare a translation for it to enter into force in France, Germany and in Switzerland/Liechtenstein, with no additional formality.

The requirements of the various contracting states as to translation of European patents after May 1^st, 2008 are detailed in the table herewith.

A contracting state that has ratified the London Agreement may however require that the owner of the patent should, at its own cost, provide a full translation of the European patent into an official language of that state, at the request of an alleged infringer, or at the request of the competent jurisdiction in the case of litigation, or of a quasi-judicial authority in the case of a procedure.

Of course, the requirement to pay annuities to the Offices concerned in order to maintain a patent in force is not removed by the entry into force of the London Agreement, nor is the requirement to translate the claims prior to grant.

Furthermore, we recommend the appointment of a patent attorney in the contracting states that no longer require a translation, in particular to limit the risks of a notification from the Offices concerned being sent to the wrong address (notice of lapse, etc.).

Translation requirements for European patents

	STATE	DESCRIPTION	CLAIMS
	Austria	German	German
	Belgium	French, Dutch or German	French, Dutch or German
	Bulgaria	Bulgarian	Bulgarian
	Switzerland	No translation	No translation
	Croatia	English	Croatian
	Cyprus	Greek	Greek
	Czech Republic	Czech	Czech
	Germany (1)	No translation	No translation
	Denmark (2)	English	Danish
	Estonia	Estonian	Estonian
	Spain	Spanish	Spanish
	Finland	Finnish or Swedish	Finnish or Swedish
	France	No translation	No translation
	The United Kingdom	No translation	No translation
	Greece	Greek	Greek
	Hungary	Hungarian	Hungarian
	Ireland	English	English
	Iceland (2)	English	Icelandic
	Italy	Italian	Italian
	Liechtenstein	No translation	No translation
	Lithuania	No translation	Lithuanian
	Latvia	No translation	Latvian
	Luxembourg	No translation	No translation
	Monaco	No translation	No translation
	Malta	English	English
	The Netherlands (2)	English	Dutch
	Norway	Norwegian	Norwegian
	Poland	Polish	Polish
	Portugal	Portuguese	Portuguese
	Romania	Romanian	Romanian
	Swedish	Swedish (or English if, as announced, the Agreement enters into force as of May 1st, 2008)	Swedish
	Slovenia	No translation	Slovenian
	Slovak	Slovakian	Slovakian
	Turkey	Turkish	Turkish

(1)   The German law for transposition of the London Agreement provides for entry into force in Germany on September 1^st, 2008. It is expected to be corrected (not before June 2008) such that the date of entry into force is May 1^st, 2008

(2)In these countries, the description may also be provided in the official language of the country concerned.

Marc Santarelli