Maryland Bar Bulletin
Publications : Bar Bulletin : March 2008

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The European Patent Convention (EPC) permits applicants from all over the world to file a single patent application that has the effect of establishing a right of priority in all of the EPC member countries. Applicants that have previously filed an application in a country that is a member of the Paris Convention can also claim the benefit of that earlier priority date if their application to the European Patent Office is filed within the year.

Under the EPC, an applicant can file and prosecute an application in one of the three official languages: English, French or German. This obviously provides a significant advantage to English-speaking applicants from the United States, since no translations are required during the examination stage. Thus, a U.S. applicant can avoid all translation expenses until the end of the process, when the scope of the claims and the potential commercial value of the invention have been finally determined.

Once the European Patent Office has indicated its intention to grant a European patent for the allowed claims, the applicant must then have all of the claims translated into the other two official languages. In the case of English-language prosecution, the claims will have to be translated into French and German as a condition of the grant. The patent is then issued with the specification in English and the claims in English, French and German.

It is also up to the applicant to decide in which of the EPC member countries the granted European patent will be validated. Because the overall expenses incurred for each country of validation include translation and annual maintenance fees, even large corporations are selective and limit the number of countries in which a granted European patent is validated.

Under the practice that has prevailed since the inception of the EPC, member countries have required applicants to have the entire European patent translated into the local language as part of the validation process. The theory and practice has been that the validation of a European patent grant in, e.g., France is to be treated as a French national patent for the purposes of determining the scope of the claims, liability for infringement and the like. The high cost of translating the patent has been raised as a problem for patent owners under the EPC.

Lessening the Burden of
Translation Costs

Almost a decade ago, representatives from a group of EPC member countries met and eventually formulated the Agreement dated 17 October 2000 on the application of Article 65 of the Convention on the Grant of European Patents (“the London Agreement”). The London Agreement will take effect on May 1, 2008, and promises to greatly reduce translation costs for applicants who seek patent protection in the participating nations.

As noted above, in the past, an applicant who obtained a European Patent under the European Patent Convention and proceeded to validate it in member states was generally required to translate the entire patent into each state’s national language. The London Agreement will eliminate or at least reduce this requirement for many nations.
Nations that ratify or accede to the London Agreement will fall into one of two categories, which will determine the revised procedure that will be followed in each nation.

The first category is those nations that recognize English, French or German as an official language. Nations in this category will accept patents in any one of those three languages, without any translation being required. This means that an application in English can, beginning May 1, be validated without any translation, not only in the U.K., but also in France, Germany, Liechtenstein, Luxembourg, Monaco and Switzerland.

The second category is those nations in which English, French or German is not an official language. These nations must select at least one of those languages as a prescribed language. An application written in a prescribed language would be acceptable for validation of a European Patent in the adopting nation. However, each of those signatory nations also has the right to require that the claims be translated into its official language. In this category:

  • Croatia will accept patents written in English, with the claims translated into Croatian.
  • Denmark will accept patents written in English, with the claims translated into Danish.
  • Iceland will accept patents written in English, with the claims translated into Icelandic.
  • Latvia will accept patents written in English, French or German, with the claims translated into Latvian.
  • The Netherlands will accept patents written in English, with the claims translated into Dutch.
  • Slovenia will accept patents written in English, French or German, with the claims translated into Slovenian.
  • Sweden is expected to ratify the London Agreement, though it has not yet done so. It will accept patents written in English, with the claims translated into Swedish. Alternatively, it would accept patents written in French or German, with the claims translated into Swedish and the description translated into either English or Swedish.


If the London Agreement proves popular, other contracting and extension states of the European Patent Convention may accede to it. Of those nations, Austria, Belgium, Ireland and Malta would fall into the first category, while the remaining EPC-member nations and extension states of Albania, Bosnia and Herzegovina, Bulgaria, Cyprus, Czech Republic, Estonia, Finland, Greece, Hungary, Italy, Lithuania, Macedonia, Norway, Poland, Portugal, Romania, Serbia, Slovakia, Spain and Turkey would fall into the second category.

As noted, the European patent process presently requires that the claims of the allowed application be translated for publication into English, French and German prior to grant of the patent, and this requirement remains in place. Furthermore, in the event of a dispute relating to a European patent, a London Agreement nation may require that the patent proprietor provide a full translation of the patent into an official language of that nation. However, the London Agreement will greatly reduce the translation expenses for the typical multi-country validation process.

Applicants who already have had mention of the grant published in the European Patents Bulletin may wish to delay the grant procedure until after May 1, in order to take advantage of the London Agreement. This may be accomplished by paying the grant and renewal fees now, and withholding the submission of the claims in English, French or German versions. The European Patent Office will then set a deadline three or four months in the future for submitting the translated claims (and paying an additional fee). By the time that deadline is reached, the London Agreement will be in force.

For applicants whose pending applications have not yet had mention of the grant published in the European Patents Bulletin, there is no need to delay prosecution. An applicant presently has three months from the date of such publication to provide the costly full translation into the official language of each validated nation. Therefore, for any mention of the grant published after February 1, the London Agreement will come into force before the three months runs its course, superseding the full translation requirement for participating nations.

Thomas E. Spath is of counsel to the New York City firm of Abelman, Frayne and Schwab. The author extends special thanks to Charles S. Stein, Esq., of the Abelman firm.

Thomas E. Spath is of counsel to the New York City firm of Abelman, Frayne and Schwab. The author extends special thanks to Charles S. Stein, Esq., of the Abelman firm.

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Publications : Bar Bulletin: March 2008

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