France Has Now Ratified The London Agreement

The London Agreement, which allows for reduced translation costs upon validation of a granted European patent in some national states, was originally expected to come into force in either February 2008 or March 2008. Any patent having a date of grant after the date of entry into force of the London Agreement benefits from the reduced translation costs in the countries that have signed up.

However, the date of entry into force was delayed since the ratification of the Agreement by France did not occur as expected. France has now ratified, and the Agreement will come into effect on 1 May 2008.

Therefore, any European patent having a grant date after 1 May 2008 will be able to benefit from these reduced translation costs if validating in the countries that have signed up.

How Does the London Agreement work?

Countries that have signed up to the agreement fall into two camps:

a) countries having English, French or German as their official language (or one of their) official languages cannot demand a translation of the specification into any other language irrespective of the language that the European Patent was prosecuted in. A translation of the claims into English French or German can be required but this does not necessitate any additional translation since such claims translations are prepared as part of the European grant procedure.

Of the countries that have so far signed up, France, Germany Liechtenstein, Luxembourg, Monaco, Switzerland and the UK fall in this camp.

b) countries not having English, French or German as one of their official languages can nominate English, French or German and it is necessary to file a translation into the nominated language when validating the Patent. These countries also have the power to call for a translation of the claims into their national language on validation.

Of the countries that have so far signed up Croatia, Iceland, Latvia, the Netherlands and Slovenia fall in this camp. In addition, Denmark and Sweden have indicated their intention to ratify the London Agreement. We understand that the nominated language of Denmark, the Netherlands and Sweden is likely to be English. We will inform you when we learn the language requirements of the other countries.

Other European countries, most notably Italy and Spain, have yet to ratify the London Agreement.

Can I ensure that an EP application benefits from the London Agreement?

It usually takes 6-8 weeks following the payment of the grant and printing fees and filing the translation of the claims into FR and DE before the European Patent is granted. Thus European Patents with a deadline for completing these acts after mid March will probably benefit from the London Agreement. Those cases with an earlier deadline can have their grant dates delayed using the further processing provision of the EPC (which involves paying the grant and printing fees, and filing the translation of the claims into FR and DE late and paying an additional further processing fee of �210). This procedure will usually delay the process by 2 to 3 months.

How does this affect validation of patents in the UK?

Although the London Agreement affects all European patents granted on or after 1 May 2008, the UKIPO, at least, is adopting a position that will affect any EP(UK) patent that has a deadline for validation on or after 1 May 2008.

The position at the UKIPO will be as follows for European patents granted prior to 1 May 2008:

European patent granted from 1 February 2008

Patent proprietors will be able to take advantage of the three month prescribed period for filing a translation. This means that a translation will not need to be filed for the patent to enter into force in the UK.

European patent granted between 1 December 2007 and 31 January 2008

A two month extension to the period for filing the translation may be requested under rule 108(2). A two month extension requested before 30 April 2008 will be automatically allowed as usual. The extended period would then expire on or later than 1 May 2008 and a translation will not need to be filed for the patent to come into force.

For extension requests made on or after 1 May 2008 each request will be dealt with based upon the facts of the case.

European patent granted prior to 1 December 2007

Any prescribed period extended under rule 108(2) will expire prior to 1 May 2008 and a translation must be filed for the patent to come into force in the UK unless a discretionary extension under rule 108(3) has been allowed. All such extension requests will be considered based upon the facts of the individual case.

If you have any specific questions relating to this update, or if you require information as to the position adopted in other EPC member states, please contact Andrea Ruhrmann (aruhrmann@kstrode.co.uk) at Kilburn & Strode www.kstrode.co.uk, London, UK

The information contained in this alert is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

 

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