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Possible consequences of the London Agreement
2.5.2008
Désolé. Actuellement, cette page n'existe pas en français.
by
Walter Holzer
The London Agreement is a multi-lateral treaty distinct from the European Patent Convention, although it is based on Article 65 EPC and has bearing on Article 69 EPC and the related Protocol. Upon ratification, the Agreement eliminates the need to file a translation of the text of a European patent (granted in English, French or German) in the signatory states. Signatory states that do not communicate in one of the official languages may adopt one or request a translation of the claims in their national language. Only in the case of an actual or threatened conflict will a complete translation be produced.
To date, the London Protocol has been signed by 13 member states. More signatures are expected, which may bring the number of countries to about half of all member states of the European patent organisation, but this is speculation at this point. The Agreement entered into force on 1 May 2008. However, a number of questions remain.
Of public interest
First, we must consider what impact this is going to have on the public and on third parties, respectively.
The Protocol to Article 69 EPC stresses the need for a "reasonable degree of legal certainty for third parties" as concerns the extent or scope of protection conferred by a European patent. As not only Article 69 EPC but also the Protocol (in both of its borderline approaches) refer to the description for interpretation purposes, the "actual" scope of protection of the European patent would apparently not be sufficiently evident to the public from the claims alone - even though ideally, according to T 2/80, the claims should be understood without the support of the description. The interpretation principle to be applied after publication of the application is stated in T 187/91: "Upon publication, a careful and analytical reading of the whole content of the application would reveal what is essential to the invention in order to achieve its stated aims."
Lost in translation?
The main question in the present context is this: To what extent can third parties who are not familiar with the language of the proceedings rely solely on the claims that may also cover "equivalents", as referred to in the EPC 2000? How can a third party be aware of the extent of the claims and equivalents, particularly if the language of the proceedings is not the language of the third party?
Normally, it cannot without the help of a patent attorney or a Patent Office offering proceedings for a declaration of non-infringement, or an opinion such as the UKIPO. Could someone convincingly claim that he acted in good faith and did not infringe because he was not able to deduce a particular equivalent embodiment from the literal claim wording? As such, one of the effects of the London Protocol may be an increased demand for interpretation services.
Legitimate concerns
As concerns situations of infringement, prior to any enforcement action, "The translation could either be filed at the national patent office and be published by it, or served by the patentee on an alleged infringer as and when necessary". Though it may appear straightforward, in practise it's not always as easy as it sounds.
A patentee discovering ongoing infringement at a trade fair that lasts for just one week, for example, is naturally under time pressure. Under the present regime it would, at least in Austria or Germany, be possible to present the patent and the evidence of the translation filed to the court with the petition for rendering a preliminary injunction or seizure. A preliminary order could then be obtained within three days. Under the Agreement, a hasty overnight translation of the specification would have to be made, which may be a problem. A similar situation would arise, for example, in connection with an intended seizure by customs authorities.
Arguments concerning the translation of the specification can ensue about who and in which manner a translation for interpretation purposes must be made in connection with proceedings for declarations of non-infringement. Problems may also come up with revocation actions. The petitioner may probably be required to file a "plain" action based on the translated claims alone or to submit a certified translation at his own expense.
Money Matters
What impact will the London Agreement have on applicants? Difficult to say. A stronger engagement of SMEs abroad depends on the situation in individual markets.
Some applicants, large companies in particular, might be tempted to extend the number of validations, even if they would have more annuities - on which, of course, the EPO profits - and which would swallow some of the money saved on translations.
The European Patent Office calculates that on each European patent, perhaps €4 000 will be saved on translation costs, and that an overall cost reduction of 40% in validations would take place. In terms of the EPO website calculation, that would mean a total expense of €24 000 over ten years for a European application requiring four translations. On the other hand, many applicants will have to produce an English-language translation anyway if they intend to file in the United States of America, for example.
The numbers game
Will the number of international / European filings increase? I would not expect a larger number of international filings by European SMEs due to the relatively high overall costs of the filing and proceedings. It is, of course, risking money, taking into consideration that less than 50% of applications make it to a patent.
We may also witness an increase in national annuity fees, in particular in those national patent offices, if any, that profit from validations. Large constitutional applicants (multinational companies) might shift the money saved on validations to boost inventive activity - or they might simply regard it as a saving for their budget.
Applicants from English-speaking countries or from countries that usually file in English (such as Japan and China) might increase the number of their international filings, thus boosting the number of English-language European patents. At the same time, the volume of the specifications of European patent applications might skyrocket due to the fact that no translations need to be produced, at least for a number of countries.
Some countries, including Denmark, will under the Agreement demand a claim translation in the national language. From a political point of view, one can ask if the London Agreement contributes to a renewed consideration of the Community Patent, which was declined by industry officials on the basis that the claims be translated only into the languages of the member states.
On the homefront
What impact is the London Agreement going to have on national patent attorneys? Ratification of the Agreement will have a strong economic impact on the workload of national private practitioners, although the extent will depend on the relevant signatory country and the number of validations performed by an office.
Still, it is probably fair to estimate that in some of the private offices, 20% or more of the turnover depends on validations.
In those countries where the economic impact is stronger - in France, Austria or The Netherlands, for example - private practitioners might be tempted to compensate for some of the lost revenue by laying off staff (or candidates training to become European patent attorneys), merging with other offices or looking for other compensatory work. Like other enterprises that lose market share, these offices will have to adapt. This will, of course, be easier for practitioners in the two countries that cover approximately 70% of the direct work before the EPO.
We may safely assume that competition between patent attorneys will arise, in particular on the national front, where the number of clients is not unlimited. We may recall that in France, for example, only 80(!) French companies have a patent department of their own.
A new imbalance?
Whether the London Agreement will be an incentive that helps improve the European research and invention situation remains to be seen. I have my doubts because, in this respect, other mechanisms play a more important role.
Indeed, we may expect the London Agreement may exacerbate today's imbalance in the distribution of workload across Europe.
Walter Holzer, Patent Attorney and former President of epi (Institute of Professional Representatives before the EPO)