One of the major considerations for any company building up a position in Europe is the costs of validating the European patent in the various contracting states of the European Patent Convention (EPC). While the costs of prosecution, i.e. handling the European patent application and pushing it through to grant at the European Patent Office (EPO) are acceptable, the costs for the subsequent validation phase have thus far been considerably higher, mainly due to the enormous costs for doing translations. This is particularly true for companies active in rapidly evolving fields of technology, such as biotech, pharmaceuticals and medical technology.
After grant, a European patent is only in effect in those states in which it has been validated. Most of the EPC contracting states require that for validating the patent in their territory, the patent needs to be translated in the respective official language of that particular state (e.g. Italian, Spanish, German, English, Greek etc.). For validating the patent in all 34 EPC contracting states, a translation in 24 official languages is still necessary, which can cause costs of several 10 000 Euros.
In order to reduce these high translation costs, a number of EPC contracting states, including Germany, France and Great Britain, concluded the „London Agreement“ in the year 2000. According to this agreement, each member state will either abolish or at least substantially reduce the translation requirement for granted European patents as follows: Those member states of the agreement in which one of the official languages of the EPO (German, English, French) is a national official language will waive the translation requirement altogether. That means that if the patent is written in English it does not have to be translated into German and French in states that have German or French as their official language.
Those member states of the „London Agreement“ in which German, French or English is not a national official language, will have to declare one of these languages as a „selected language“ and will have to accept patents granted in the selected language, or translations into the selected language, without requiring a full translation into its own national language. However, such states can still require a translation of the patent claims in the respective national language. As an example, if Sweden selects English and the patent was written in English no translation of the specification is required anymore; only the claims need to be translated in the Swedish language.
All states which are a party of the “London Agreement” still retain the right to request a complete translation of the patent in case a legal dispute arises, e.g. national infringement proceedings etc.
On 9 October 2007, the French senate has ratified the London Agreement, and the ratification document has now been deposited on January 29, 2008 with the German government in Berlin, as required by Article 3 of the Agreement. According to Article 6 of the London Agreement, the Agreement enters into force on the first day of the fourth month after deposition of the last ratification document. That means that the Agreement will enter into force on May 1st, 2008.
Obviously, this will have an enormous impact on reducing the costs of a European patent, since the costs for translations are cut down to a large extent. For companies active in rapidly evolving and highly competitive fields of technology, such as the Life Sciences sector and in there especially biotech, this should be a real incentive to think about having more patent applications in Europe.
The Agreement will be applicable to all European patents, of which the grant will be published on or after May 1st, 2008. The implementation of the London Agreement in the respective national states is, however, dependent on the respective national implementing regulations. This process may, in fact, extend beyond May 1st, 2008 and may also vary from state to state.
In our law firm, we have taken steps to delay the prosecution of European patent applications that are close to grant, so that they will fall under the London Agreement from May 1st 2008 onwards.