The London Agreement

The London Agreement significantly reduces the cost of the grant stage of a European patent by reducing the requirements for translations in many EPC contracting states. It enters into force on 1^st May, 2008.

The effects of the London Agreement apply:

• to European patents granted on or after 1^st May, 2008, but,

• in the United Kingdom and Switzerland/Liechtenstein, to European patents granted on or after 1^st February, 2008^*.

*(Or earlier in the United Kingdom– see below)

General principles

For contracting states party to the London Agreement, it is no longer necessary to furnish a translation of the entire patent specification. It is still necessary to provide the claims of a European patent in all three official languages of the EPO (English, French, German) before grant, but for states party to the agreement, either no further translations are required, or the only remaining requirement is:

• a translation of the claims into an official language of the contracting state, or
• a translation of the description into a specified official language of the EPO (and for states that have so far signed up, no language other than English has been specified)

The EP contracting states currently party to the London Agreement are:

Croatia, Denmark, France, Germany, Iceland, Latvia,

Liechtenstein, Luxembourg, Monaco, Netherlands,

Slovenia and Switzerland and the United Kingdom.

Sweden is also expected to implement the London Agreement with effect from 1^st May, 2008.

The Agreement does not prevent countries from requiring a translation into their national language in the event of a dispute.

Effects in United Kingdom

After translated claims have been filed at the EPO (before grant), no further translations are required to validate a European patent in the United Kingdom. In other words, when a European patent designating UK is granted, no further action is required to bring the patent into force in the UK. This applies to European patents granted on or after 1^st February, 2008 (earlier than 1^st May, 2008 because of UK legislation). Renewal fees are, of course, payable annually.

• For EP (UK) patents in French or German that are granted before 1^st February, 2008, a translation of the patent specification is in theory still required to validate the patent in the UK.
• However, for European patents granted between 1^st December, 2007 and 31^st January, 2007, it is possible to request a two month extension to the period for filing the translation, and if the extended period expires on or after 1^st May, 2008, a translation will not then be required.
• For European patents granted before 1^st December, 2007, a translation is required, unless a discretionary additional extension is allowed, which applies only in certain limited special circumstances.

In any case, patent proprietors are strongly recommended to register an address for service in the UK (for example, Jenkins) at the UK Intellectual Property Office (UKIPO), to ensure that communications from the UKIPO are handled correctly.

Effects in Germany

The position in Germany is similar: after translated claims have been filed at the EPO, no further translations are required to validate a European patent in Germany. In other words, when a European patent designating Germany is granted, no further action is required to bring the patent into force in Germany. This applies to European patents granted on or after 1^st May, 2008.

• For EP (DE) patents in English or French that are granted before 1^st May, 2008, a translation of the patent specification is still required to validate the patent in Germany.

As for the UK, patent proprietors are strongly recommended to register an address for service in Germany (for example, Jenkins' German office) at the German Patent and Trade Mark Office (GPTO), to ensure that communications from the GPTO are handled correctly. Annual renewal fees fall due.

Other EPC contracting states party to the London Agreement

Apart from the requirement to file claims in all three EPO official languages before grant, the additional translation requirements for all contracting states depend on whether the states have an official language in common with the official languages of the EPO.

(1) France, Lichtenstein and Switzerland have an official language in common with an official language of the EPO and no further translations are required in these states.

(2) Denmark, Iceland, the Netherlands and Sweden require a translation of the claims into the national language and a translation of the description into English.

(3) Latvia and Slovenia merely require translation of the claims. Croatia recently joined the EPC and falls in the same category.

(4) Monaco has no validation requirements at all.

EPC contracting states not party to the London Agreement

For EPC contracting states not party to the London Agreement, the translation requirements remain the same.

Further details

The above constitutes a general overview. For further information or advice, please visit the following pages on our website:

http://www.jenkins.eu/articles/epc-states-2008.asp;

http://www.jenkins.eu/pi-autumn-2007/early-effects-of-epc-2000.asp,

or the following links:

http://www.epo.org/patents/law/legislative-initiatives/london-agreement.html,

http://www.ipo.gov.uk/policy/policy-notices/policy-notices-londonagreement.htm,

http://www.dpma.de/infos/pressedienst/pm080201.html

or contact us on info@jenkins.eu.