London Agreement to Enter into Force on 1 May - A Reduction In Validation Costs For European Patents

UPDATE - 31 January 2008

Contents:

1. Overview - The London Agreement
2. More Information About The London Agreement
3. To Which Countries will the London Agreement Apply?
4. What Measures Should be Taken Between now and 1 May 2008?
5. European Patent Validation and the London Agreement Q&A
   1. What is the London Agreement?
   2. Why is the London Agreement important?
   3. Will the London Agreement apply to a recently allowed European patent application?
   4. Will the London Agreement apply to a recently granted European patent?
   5. What measures should be taken during the transition period?
   6. Will the London Agreement apply to all member states?
   7. What will happen to the validation costs overall?
   8. What will happen to the validation costs on a country basis?
   9. Why is the London Agreement coming into force now?

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1. Overview - The London Agreement
The London Agreement [see footnote] is due to come into force on 1 May 2008 after France deposited the instrument of ratification with the German Ministry of Justice on 29 January 2008.

The agreement will make patenting in Europe cheaper by reducing post-grant translation costs. The savings on translation costs will have a significant practical impact for patentees in those European Patent Convention states which are party to the London Agreement. 

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European patents may be granted in one of three languages, namely English, German and French. 

Under the London Agreement, a granted European patent automatically has force in the UK, Germany and France (subject to the payment of renewal fees).  In other member countries, no translation of the main text of the patent will be required, if the patent is in their designated preferred language.  Although enabling legislation has yet to be passed in many of the member countries, those who have indicated a preferred language have, so far, all designated English.

The London Agreement permits member countries to require translation of the claims into their official language, and it appears that this option will be adopted by most (if not all) member countries. 

Once the London Agreement has entered into force then, subject to how it is enacted in the member countries, it is expected that there will be no further requirement for translation of the body of the patent. Thus, all that will be necessary to register your patent in a member country will be to file a translation of the claims and pay a registration fee. 

Full translation will continue to be required in countries which are not party to the London Agreement.

In the event of a dispute relating to a European patent, a state can require the patentee (at the patentee's expense) to supply a full translation into that state’s official language following a request made either by the alleged infringer or by the court.

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3. To which countries will the London Agreement apply?
From 1 May, the London Agreement will apply to all states which have both ratified it and deposited their instruments of ratification.  As of today, these are Croatia, Germany, France, Iceland, Latvia, Luxembourg, Liechtenstein, Monaco, the Netherlands, Slovenia, Switzerland and the UK.

Denmark and Sweden have made provision to amend their respective Patent Acts but have so far delayed deposit of their instruments of ratification. It is expected that many more EPC countries will ratify the Agreement now that the French have done so.

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4. What measures should be taken between now and 1 May 2008?
It makes sense to do what is possible to make sure that grant is delayed until after 1 May 2008, but without risking accidental abandonment of the European patent application. Delaying grant until after 1 May 2008 (if possible) will enable you to take advantage of the validation cost reductions.

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5. European Patent Validation and the London Agreement Q&A
The following question and answer session is intended to explain the likely effect of the London Agreement on the European Patent validation process. It is a general document and not linked to the facts of any individual case.

Question 1. What is the London Agreement?
It is a treaty between member states of the European Patent Organisation, whereby the signatory states waive the right under Article 65 of the European Patent Convention to require that the description of a European patent is translated into one of its official languages when it is granted in order to enter into force in that state.

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Question 2. Why is the London Agreement important?
For the typical case, the cost of validating a European patent is dominated by the cost of translating the description into multiple languages. These costs will now disappear for countries signed up to the London Agreement.

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Question 3. Will the London Agreement apply to a recently allowed European patent application?
Almost certainly yes, since the London Agreement enters into force on 1 May 2008, and the EPO grant cycle typically takes much longer than 3 months. The only exceptions are likely to be applications undergoing accelerated processing, for example to initiate infringement actions.

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Question 4. Will the London Agreement apply to a recently granted European patent?
Generally speaking no, since the grant date needs to be on or after 1 May 2008. However, in the UK effectively yes, since the UK transitional arrangements are such that no translation into English is required for any European Patent in French or German that is granted on or after 1 February 2008. This is because, in the UK, the relevant rule specifies the translation requirement in terms of the deadline of 3 months from grant allowed for filing the translation, not the grant date. We are not aware of any other London Agreement countries that have followed this generous approach.

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Question 5. What measures should be taken during the transition period?
It is also sensible to delay instructing any validations in affected countries until it is clear whether the London Agreement will apply or not to each individual European patent. Essentially this means that instruction should be delayed until the date of grant of the patent is known.

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Question 6. Will the London Agreement apply to all member states?
No. It is a voluntary agreement, so it will only apply to member states that sign up to it. The founder members will be Germany, France, United Kingdom, Switzerland (including Liechtenstein), and the Netherlands, together with some "smaller" countries which are less often designated and validated, namely Iceland, Latvia, Monaco and Slovenia. Sweden and Denmark have also agreed to join, but have not yet formally acceded to the agreement. It is likely they will also be founder members. Other countries are also likely to join either before commencement or shortly afterwards.

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Question 7. What will happen to the validation costs overall?
The London Agreement will cause a dramatic reduction in overall validation costs for the typical case. However, the EPO grant-phase costs will not change. Typically the translation costs for London Agreement states which currently require a translation will reduce to about 10% of their current levels. (This is based on a random sample of 50 granted European patents that we have looked at.)

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Question 8. What will happen to the validation costs on a per country basis?
They may go up, down or stay the same. It's a bit complicated. Here we assume the European patent application was filed in English and that all London Agreement states designate English as their "second language", which is true so far.

For the United Kingdom, and other English speaking countries, there will be no effect on cost, since no translation is currently needed. For non-English speaking countries the effect on cost will depend on whether they have joined the London Agreement or not.

For non-English speaking countries that have joined, the costs will either go down significantly or stay the same. For example, the cost of validating in France will reduce significantly, but the cost of validating in Switzerland will stay the same, since although Switzerland currently requires a translated description, one is typically already available from the French or German validation.

For non-English speaking countries that have not joined, the costs will either go up significantly or stay the same. For example, Belgium has not joined as yet, so if validation in Belgium is required, it will be necessary to translate the description specifically for Belgium, whereas currently it is possible to re-use the French text prepared for validation in France. For other countries, this re-use of translations may still be possible, for example in the case of Cyprus and Turkey, neither of whom has joined, so costs will not change.

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Question 9. Why is the London Agreement coming into force now?
Although it was signed in 2000, the treaty is worded so that it does not come into force until a minimum of 8 countries have joined, where the 8 must include United Kingdom, Germany and France. The threshold of 8 was reached some time ago and included the United Kingdom and Germany. Commencement has thus been dependent on France adopting the treaty, which it did on 29 January 2008.

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