Cheaper European Patent Protection in the Pipeline
In terms of current European patent practice a person wishing to obtain patent protection simultaneously in several European countries will follow a multi-stage procedure including a filing and prosecution stage, a European grant stage and a validation stage in selected countries.
In the first two stages the applicant files and prosecutes a single European patent application at the central European Patent Office (EPO) based in Munich. The application can designate any or all of the thirty-odd countries that are members of the European Patent Convention (EPC) and can be in any of the official languages of the EPO, namely English, French or German. At the successful conclusion of the filing and prosecution stage, the EPO accepts the application and gives notice of its intention to grant a patent.
In the European grant stage, the applicant is obliged to file translations of the patent claims (not the full patent specification) into the other two official languages and to attend to other grant formalities at the EPO. Although a European patent will then be granted by the EPO the granted patent is only enforceable in individual European countries once it has been validated in those countries.
In the validation stage, the granted European patent can be validated in any or all of the countries originally designated in the European application. Typically, validation involves the appointment of a representative patent attorney and the filing of a full translation of the patent specification, including the patent claims, in each selected country.
Up to the point of validation, the facility to file a single application and deal with a single patent examiner is generally very cost effective compared to filing and prosecuting separate patent applications at the national patent offices of individual European countries, especially if a number of territories are selected. However, the high cost of patent translation means that the validation stage normally makes a substantial contribution to the overall cost of the patent procedure.
Recognising that translation of the full patent specification substantially increases the overall cost of the patent, the so-called London Agreement has been ratified by a number of EPC member countries. In terms of this agreement, countries that have English, French or German as an official language will no longer require translation of the full patent specification. Other ratifying countries will only require a translation (into the local official language) of the patent claims, and not the full patent specification. This will result in the saving of substantial costs involved in translating the body of the patent specification.
The London Agreement will only come into force when it has been ratified by the required number of EPC member countries. It is anticipated that the required number of ratifications will have taken place by the second quarter of 2008.
In appropriate cases, we are recommending to clients with European patent applications currently pending that steps be taken to draw out the patent application and validation process. This would allow them to take advantage of the London Agreement’s new rules regarding translation – subject of course to the necessary ratification. We are monitoring the situation and will offer further advice once there is clarity regarding ratification.
In the meantime, we invite clients with queries about the new rules to contact us, in order to discuss the potential benefits.
Spoor & Fisher