The London Agreement, which initially took effect in May 2008, has reduced some of the translation burden for patentees who use the EPC system, but in some instances it can also create an ‘out of sight out of mind’ risk.
A single European patent application currently gives the possibility of obtaining patent protection in up to 44 countries, being the 39 EPC member states and the 5 non-EPC extension / validation states. The decision on which of those countries to seek patent protection in only needs to be made once the EP application is granted, but to maintain the application a designation fee needs to be paid within 6-months from the publication of the European search report.
If the EP application proceeds to grant the default procedure for validation in all or some of those states is to file a translation (if required) of the patent or at least the claims with the national patent office. Article 65 of the EPC 2000 allows member states to require that a translation into one of the official languages of the member state is filed within 3-months of the date of mention of grant in the EP Bulletin if the EP application is granted in a language that is not one of its official languages.
However, the London Agreement provides for exceptions to this default procedure depending upon whether the London Agreement member has an official language in common with one of the EPC official languages of English, French and German.
Currently 22 EPC member states are also members of the London Agreement. Of these 9 have an official language in common with one of the official languages of the EPO and so get granted in the national office automatically and instantaneously without the need of validation. This is the case for Belgium, France, Germany, Ireland, Luxembourg, Switzerland (and Liechtenstein), Monaco and the United Kingdom.
There are a further 13 EPC member states that are a member of the London Agreement, but which do not have English, French or German as an official language. Namely: Albania, Croatia, Denmark, Finland, Hungary, Iceland, Latvia, Lithuania, Netherlands, North Macedonia, Norway, Slovenia and Sweden. These member states need to specify which of the EPC official languages the description is to be translated into and generally only require the title and claims to be translated into their official national language. Fortuitously for the owners of EPs that are granted in English these member states have either specified English as the language for the description or have elected to remove the requirement for the description to be translated.
Given the significant costs in obtaining a translation of the full specification EPC member states that are also a member of the London Agreement are likely to be viewed favourably when deciding where to validate.
However, the automatic and instantaneous granting of EP’s in member states that are also members of the London Agreement and which have an EPC official language as one of their official languages can put those national grants at risk of not being renewed. Given that active steps are not required to validate in those countries, and particularly for lesser opted states such as Luxembourg, Switzerland, Liechtenstein and Monaco, the owner may not know or expect that their patent is in force there and so be at risk of not subsequently renewing them. This risk can be heightened by the somewhat opaque nature of the EP Register, which is not very clear at giving the national statuses of a granted EP as it only shows the states where it is not or no longer in force. If opted into, the advent of the Unitary Patent system can reduce this risk, but it will still remain for Switzerland (and by implication Liechtenstein, which Swiss patents automatically extend to) given that those countries are not in the EU and so cannot participate in the UP and UPC system.
