London Agreement - Update on the UK translation requirements for European patents granting in French or German

16 April 2008

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1. There has been an unwelcome development regarding the date on which the translation requirement is removed for European patents (UK) granted in French or German - so-called EP(UK)s.
   

2. Our previous advice followed a guidance note issued by the UK Intellectual Property Office (UKIPO). This can be found at http://www.ipo.gov.uk/p-law-londonagreement. According to this guidance note, and quoting from paragraph 9:

"any EP(UK) granted on or after 1 February 2008 and therefore having a three month prescribed period for filing a translation expiring on or after 1 May 2008 will not require a translation to be filed."

There is now uncertainty as to whether this is correct, and it may be the case that a translation needs to be filed on any EP(UK) granted before 1 May 2008.

3. On 8 April 2008, our professional body, the Chartered Institute of Patent Agents (CIPA), publicised advice given by a barrister (i.e. a UK litigating attorney) to a firm of patent attorneys that is contradictory to the position of the UKIPO as set out in its guidance note. The contrary advice states that a translation is required to be filed on any EP(UK) with a date of mention of grant before 1 May 2008. CIPA also sent us a copy of the UKIPO reply to the advice from the barrister, stating that it disagreed with the barrister's position, but also correctly pointing out that it was ultimately a question for the UK courts to decide. The UKIPO also observed there were public policy reasons in favour of the UKIPO position in that it represents a cost saving to industry. However, the UK courts are unlikely to decide the point for some time, if ever, since it would probably need to be raised in a revocation action, or as part of a revocation counter-claim in an infringement action. 

4. The conflicting conclusions are based on different interpretations of the relevant UK statute provisions set out in Section 77 of the Patents Act 1977. The relevant sub-sections are (1), (6), (7) and (9).

(1) .... a European patent (UK) shall, as from the publication of the mention of its grant in the European Patent Bulletin, be treated .... as if it were a patent under this Act ...

(6) While this subsection is in force ... subsection (1) above shall not apply to a European patent (UK) the specification of which was published in French or German, unless a translation of the specification into English is filed at the Patent Office and the prescribed fee is paid before the end of the prescribed period ...

(7) Where such a translation is not filed, the patent shall be treated as always having been void.

(9) subsection (6) above shall come into force on a day appointed for the purpose by rules and shall cease to have effect on a day so appointed, without prejudice, however, to the power to bring it into force again.

5. The working of the section can thus be understood by saying that subsection (9) switches subsection (6) on and off, and subsection (6) makes the treatment of an EP(UK) in French or German as a UK patent conditional on filing a translation (and paying a fee which is currently zero) within the prescribed period (3 months from grant, extensible as of right by another 2 months on payment of a fee). When the EPC came into force in 1978, subsection (6) was not switched on.

6. Subsection (6) was switched on by an "appointed day" of 1 September 1987, which was interpreted to mean that the translation requirement applied to any EP(UK) with a date of mention of grant on or after 1 September 1987.

7. Subsection (6) will be switched off as a result of Rules 56(9) & (10) of the UK Patent Rules 2007, which specify the "appointed day" to be the day that the London Agreement comes into force, which is 1 May 2008.

8. Turning now to the point of contradiction, the UKIPO has taken the view that the requirement to file a translation is not fixed in time on grant, but is a continuing obligation over the prescribed period (3 months from grant), and if this continuing obligation is removed before expiry of the prescribed period, it never needs to be fulfilled. Consequently, as long as the prescribed period (or an extension thereof) does not expire before 1 May 2008, no translation needs to be filed.

9. On the other hand, the barrister's position is that, if the date of mention of grant is before 1 May 2008, the obligation to file a translation according to subsection (6) is not removed by subsection (6) ceasing to have effect on 1 May 2008. Rather, this obligation remains and must be fulfilled, and if not fulfilled the patent will be void as specified in subsection (7).

10. Our view is that both opinions are tenable interpretations of the statute and rules. Moreover, the European patent convention (EPC) and the London Agreement provide no clarification. Article 1(1) LA says that the UK shall dispense with the translation requirement under Article 65, paragraph 1, and by Article 6 this shall enter into force on 1 May 2008. More fundamentally, the translation requirement of Article 65 EPC is entirely optional and the UK is free to abolish it in advance of the London Agreement coming into force. The sole determinant of the UK position would therefore seem to lie with the UK statute and rules.

11. Even if the advice from the UKIPO is wrong, and the barrister's opinion is correct, it is likely, but not certain, that this would not lead to loss of rights for the reasons now explained.

12. Although the prescribed period for filing the translation is only 3 months from grant, with a further 2 month extension possible under Rule 108(2) as of right, it is possible to extend the period for any length of time at the discretion of the UKIPO under Rules 108(3) and (6), even if the request for extension is made after the prescribed period has expired.

13. It could be argued that a patentee should have a legitimate expectation that the UKIPO guidance note is correct, and should not be penalised for following it. Consequently, if the UKIPO ever withdrew or amended its guidance note and specified that a translation was, or might be, required for a EP(UK) granted in the period 1 February 2008 to 30 April 2008, then if an affected patentee made a prompt request for an extension of time for filing the translation (and paying the extension fee), one would imagine it would be difficult for the UKIPO to deny such a request. An affected patentee might therefore have an expectation that he could file a translation late if required by a change in UKIPO practice. On 9 April 2008, we wrote to the responsible Divisional Director at the UKIPO to ask if the UKIPO could promise to grant such discretionary extensions if needed in the future. On 11 April 208, we received a reply setting out the position of the UKIPO as follows:

"Your suggestion that the comptroller could indicate that, in the event
the courts determine that a translation was in fact required for a
patent granted from 1 February 08 to 30 April 08, he would grant
extensions to permit this without the filing of evidence, is an
interesting one.  However, although it seems likely that the comptroller
would look favourably on such requests, I regret that it would not be
possible to fetter the future exercise of discretion by offering a
blanket promise to act in such a way in respect of as yet unidentified
cases."

14. Consequently, it seems likely an extension would be given, but there is no guarantee of this. The responsible Divisional Director at the UKIPO also referred to Rule 107 which allows a patentee to correct "irregularities" within a period set by an office action, in the case that "the irregularity ... is attributable, wholly or in part, to a default, omission or other error by the comptroller, an examiner or the Patent Office". This process needs to be initiated by a notification from UKIPO to the patentee. The Deputy Director is thus hinting that UKIPO would write to an affected party requesting a translation if at some time in the future it was decided that its guidance note on the London Agreement was wrong. To quote from the closing remarks of the Deputy Director's email:

"Accordingly, and while I would re-emphasise our position that no translations are required for European patents (UK) granted from 1 February 2008, it does appear that rule 107 would be available as a possible solution to any loss of rights suffered by a patentee in the event that we are found to be incorrect.

I appreciate that this response may not be as definitive as you might have hoped, but I nevertheless trust that it will be of some help to you. I am of course happy to discuss further if you wish. I am also content for this e-mail to be circulated as you feel appropriate."

15. To summarise, since there is some risk of a European Patent (UK) granted prior to 1 May 2008 becoming void if no translation is filed in the normal period, this is not an approach D Young & Co can endorse. Nevertheless, it is up to individual clients to assess the level of risk resulting from not filing a translation in view of the potential legal remedies available under Rules 107 and Rule 108 and the position of the UKIPO to these as set out above.

16. Since any French or German language European patent with a date of mention of grant on or after 1 December 2007 may be affected, any patents in this category need to be checked to see if a decision was made not to file an English translation based on the UKIPO guidance note or other advice.

17. Finally, it will be appreciated that this is a general advice letter made in good faith on a subject where there is no settled law. Neither the author, nor D Young & Co, can take responsibility for any decisions taken on individual cases that lead to loss of rights, even if there are errors in the above. For advice on individual cases, the responsible attorney must be approached.

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