News

The London Agreement concerning translations of European Patents will come into force in most countries on 1 May 2008. This will lead to significant cost reductions for the proprietors of European patents.

European patent proprietors will no longer have to file a translation of the specification into all the languages of the countries to be covered, leading to a significant cost saving.

BACKGROUND

For a European Patent to take effect in the states designated by the applicant, it is currently necessary for a translation of the description and claims of the patent into the national language of each designated state to be prepared and filed.

The London Agreement (‘the Agreement’) will reduce the translation requirements and cut translation costs for EPO countries that have joined the Agreement. As matters stand, some 13 of the EPO contract countries have implemented the agreement. The Agreement will come into effect on 1 May 2008 and in most countries will apply to European patents for which the date of grant is on or after 1 May 2008 for the country concerned.

The following table summarises for designated countries party to the Agreement the expected requirements for language at grant for patent applications filed and examined in English. The clear advantage is that countries that do not have an official EPO language as their national language have mostly elected to English as the required language, with the result that translation costs are signficantly reduced where the patent was filed and examined in English.

PRACTICAL EXAMPLE

DETAIL

Countries using an official EPO language: In countries which have implemented the Agreement and which use one of the official languages of the EPO as their national language, no further translation will be necessary. This will mean that no additional translation will be required by France, Germany, Liechtenstein, Luxembourg, Monaco, Switzerland or the United Kingdom.

Countries not using an official EPO language: Other countries which have implemented the Agreement, but which do not have an official language of the EPO as their national language will treat the claims and description differently to one another:

(i) The claims will still have to be translated into the country’s national language

(ii) The description must be translated into a designated one of the official languages of the EPO. Croatia, Denmark, Iceland and Netherlands have selected English as their ‘language for translation’ and Latvia and Slovenia not prescribed a language and so no translation is required.

Other countries: EPC countries which have not yet joined the Agreement will continue to require full translations of the patent as at present. These are: Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Estonia, Finland, Greece, Hungary, Ireland, Italy, Lithuania, Poland, Portugal, Romania, Slovakia , Spain and Turkey, although it is expected that Finland will join the Agreement shortly. Luxembourg does not require any translation.

TRANSITIONAL PROVISIONS

The United Kingdom and Switzerland have both indicated that transitional provisions apply so that no translations will be needed for patents granted on or after 1 February 2008.

POSSIBLE ACTIONS TO TAKE

Another point to consider is whether you should designate additional countries in new European applications you are filing, because translation costs may be significantly lower when they reach grant.

If you have applications pending or are considering filing European applications, please speak to your usual Reddie & Grose contact for advice tailored to your situation or email us at r& This e-mail address is being protected from spam bots, you need JavaScript enabled to view it

The London Agreement concerning translations of European Patents will come into force on 1 May 2008. This will lead to significant cost reductions for the proprietors of European patents.

For patents granted after 1 May, a total of 14 of the states which are party to the EPC will no longer require a local translation of a granted European patent to be filed with the relevant local patent office in order for the European patent to come into force in those states. In the past these translations have been a significant cost burden for applicants. The states which no longer require translations include: UK, France, Germany, Netherlands and Switzerland.

Translations of the claims into all three European Patent Office official languages (English, French and German) will still be required prior to grant of a European patent.

If a European patent is litigated in any country which has waived its requirement for a local language translation, then it may be necessary to provide a local translation to an alleged infringer.

Countries which do not have one of the three EPO languages as their official language may designate an EPO language for which the translation requirement is to be waived. Thus if a country designates English as the language for which the translation requirement is waived, EP patents in French and German will still require translation into a local language. These countries may also/alternatively require a local language translation of the claims to be filed by patentees. Where this is a requirement, the cost will be significantly less than the cost of translating the full specification.

The UKIPO has cast some doubt over the transitional provisions. Our recommendation at this stage is that only patents with a grant date after 1 May will be able to take advantage of the London Agreement. We are looking into this further, and the transitional provisions in other countries, and will then issue a more detailed briefing note.

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A new High Court Decision suggests that the UK Intellectual Property Office (UKIPO) is wrong to automatically refuse patent application claims for computer programs.

Many patent applicants and Intellectual Property professionals were dismayed by the UKIPO’s November 2006 decision to begin refusing all claims drafted to computer programs. A recent decision of the High Court promises to overturn this decision, and require the UKIPO to return to the former practice of considering computer program claims on their individual merits.

The Background

In the UK and Europe, computer implemented inventions must clear a number of hurdles before they can be granted patent protection. Like their more traditional counterparts, they have to be new and non-trivial. However, as “computer programs as such” are expressly excluded from patent protection by Section 1(2) of the UK Patents Act 1977 (and the corresponding provisions of the European Patent Convention), computer implemented inventions must also make a contribution in a non-excluded field of technology. Only those computer implemented inventions that satisfy all of these criteria may be granted patent protection.

Protection for a computer implemented invention could traditionally be expressed by patent claims directed to an apparatus, a method and a computer program. In cases where the computer implemented invention is implemented by software, the claims to the computer program itself are extremely valuable to the patent holder as they allow the patent holder to seek damages arising directly from infringing copies of the software being put on the market.

Problems in the UK arose in November 2006, after the UKIPO issued a practice note in response to the Aerotel and Macrossan decisions of October the same year, to state that it would now refuse all patent claims directed to computer programs, regardless of whether any corresponding apparatus or method claims were allowable. This decision was a break from the UKIPO’s established practice of considering claims to computer programs on their merits, and represented a significant blow to patent holders by depriving them of valuable means of redress in infringement actions or licensing deals. The decision further attracted criticism from patentees and the intellectual property community alike, for putting the UKIPO at odds with Europe and introducing inconsistency in the protection afforded by patents.

Five patent applicants, comprising small UK businesses, joined forces in May 2007 to challenge the UKIPO’s practice after claims in their patent applications were refused: their protest was heard in the High Court last month. In the decision of Astron Clinica Ltd and others , and the Comptroller of Patents Designs and Trademarks, (2008 EWHC 85 (Pat)) handed down on 25 January 2008, the judge Justice Kitchen argues that the current UKIPO approach is essentially incorrect. He states:

“In a case where claims to a method performed by a computer running a suitably programmed computer, or to a computer programmed to carry out the method are allowable, then in principle, a claim to the program itself should be allowable.”

The UKIPO may now have to change its practice again, and allow claims directed to computer programs so long as they relate to an allowable computer implemented invention. Not all claims would be allowable, however, only those that are“ drawn to reflect the features of the invention that would ensure patentability of the method which the program is intended to carry out if it is run”.

This decision does not affect the test for what constitutes an allowable computer implemented invention, and is unlikely to resolve the controversy in that area. However, returning to the practice in place pre-November 2006 would benefit patent applicants in the UK by allowing them to properly protect inventions that are already deemed to be patentable.