The London Agreement

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Shortly after this article was first published the French Government performed the final procedural step of ratifying the London Agreement by depositing their Instrument of Accession at the European Patent Office (EPO). As a result the London Agreement will enter into force on 1 May 2008 and therefore any European patent having a grant date after 1 May 2008 will be able to benefit from reduced translation costs if validated in those countries party to the Agreement. HLBBshaw are providing cost breakdowns to all those interested on a country by country basis so that applicants can assess whether any savings made under the Agreement can be used to change to their validation strategy at grant. Please contact the author for further information.

By Alex Turnbull, HLBBshaw Ltd

Introduction

Much has been written about the history of the London Agreement, its mechanics and the resulting reduction in translation costs of European patents. In the following article we address the practical steps that applicants should consider now for pending applications in order to minimise future translations costs.

Entry into Force

Although the French Senate approved the London Agreement on 10 October 2007, the French government have yet to perform the final procedural step of ratifying the London Agreement by depositing their Instrument of Accession at the European Patent Office (EPO). The London Agreement will not come into force until the French government perform this step. However, once performed the London Agreement will enter into force on the first day of the fourth month after ratification. For example, if France were to ratify the London Agreement some time in January 2008 then it would enter into force on 1 May 2008.

There is, however, no obligation or time limits on France to ratify the Agreement. As a health warning, on 1 July 2007, the Swedish Parliament approved the London Agreement and amended the Swedish Patents Act in order to implement the London Agreement. The date of deposit of the instrument of ratification and thus of entry of Sweden to the London Agreement has yet to be performed. Local Swedish patent attorneys inform us that ratification is expected in March/April 2008, but until ratification actually occurs, the matter will always attract uncertainty.

Practical Aspects for Pending Applications

With uncertainty surrounding the date at which the London Agreement will come into force, applicants wishing to benefit from the London Agreement need to consider practical steps that will result in delaying the time an application takes to reach grant, specifically publication of the mention of grant in the European Patents Bulletin. This is the date from which the applicant presently has three-months within which to provide a costly full translation of the specification and claims into the language of each validated European state. Under the London Agreement, member states party to the Agreement agree to waive � entirely or partly � the requirement for translations of granted patents into their national language. Member states having a national language in common with one of the official languages of the EPO, such as France, Germany and the United Kingdom, will dispense with translation requirements altogether. The trigger date to take advantage of the London Agreement is therefore if the London Agreement is in force before the last date that the patentee has to obtain the necessary translations to validate the patent in the member states.

Practical steps to delay grant can be made during prosecution and also during the grant procedure, which for the purposes of this article is defined as the time following receipt of a communication informing the applicant of acceptance of the application and setting a four month period for which to complete certain grant formalities such as payment of a grant fee, any renewal fee due and also submission of the claims translated into French, German and English.

During prosecution, the passage of an application can be slowed down in a number of ways. Ways which should not incur additional official fees include delaying a request for substantive examination until the end of the prescribed period for doing so and requesting an extension of time to reply to an examination report. Other techniques such as non-payment of certain fees or non-response to certain official communications could be entertained but incur additional fees and surcharges.

During the grant procedure the grant fee and any renewal fee can be paid in the normal manner but the act of submitting French, German and English translated claims can be withheld. We suggest having the claims translated but withheld (rather than withholding the translation of the claims since translation can take some time). Even when the London Agreement comes into force, claims translations into French, German and English are required. A further processing communication will then issue some time after the prescribed period for submitting the translated claims and set a deadline for submitting the translated claims and payment of an additional fee. This tactic can buy the applicant an additional three to four months on top of the four months set to complete the grant formalities.

Conclusion

For those countries that have indicated that a translation of the patent description at grant is not required, a translation of the patent description into that member state�s language will be required in the event of court proceedings in that member state. Not all the member states party to the EPC have signed up to the Agreement � Spain and Italy for example have expressed reservations and so full translations of the specification and claims will be required in those countries. Moreover, additional legislation may need to be passed in some of the member states already signed-up to enable the Agreement to have effect. However, should the Agreement come into force and prove popular with applicants we would expect more member states to sign up to the Agreement thereby reducing the costs of patent translation even further.

Alex Turnbull (alex.turnbull@hlbbshaw.com) is a UK Chartered Patent Attorney, European Patent Attorney and a representative before OHIM, the European Trade Marks and Designs registry. He is involved primarily in patent prosecution, portfolio management, and opposition practice, with particular emphasis on the technical area of physics. Alex has particular experience with inventions embodied in semiconductor devices of an organic and inorganic nature, display systems and so called �plastic electronics�. Alex joined the firm from Cambridge Display Technology Ltd, where he was responsible for the prosecution and management of the company�s device physics patents and trade mark portfolio, and for a significant proportion of the company�s pure organic chemistry portfolio.

The information contained in this alert is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

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