The London Agreement, which will enter into force on 1 May, will make patenting in Europe cheaper by reducing post-grant translation costs writes Evelyn Zwick.

European patents are very popular and cost effective in terms of application, search, examination and grant. Once a patent has been issued, Art. 65 of the European Patent Convention or the EPC comes into effect, and the patent becomes expensive.

Compliant to Art. 65 of the EPC, any contracting state except Luxembourg and Monaco prescribed that if the text of a granted European patent is not drawn up in one of its official languages, the proprietor of the patent must supply to its central industrial property office a translation of this text in one of its official languages, to avoid loss of rights, namely to validate the patent in that contracting state. Further, national requirements for filing the translation may include a payment of a fee, a special formatting of the translation, a form submitted, the necessity of a national patent attorney for filing etc. The procedure of the national validation was generally done by a national patent attorney in terms of the national requirements. Hence, translation costs as well as attorney costs were high during this national validation period.

The London Agreement concluded in London on 17 October 2000, aimed at creating a cost attractive post-grant national validation procedure by reducing translation costs for European patents. It was set in motion at the Inter-governmental Conference held in France in June 1999. It will come into force on May 1, 2008. The parties of the Agreement, 13 by today, undertake to waive, entirely or largely, the requirement for translations of European patents to be filed in their national language.

This means in practice that those of the party states having one of the three EPO languages as an official language no longer require a translation for granted European patents for validation as per Art. 65 of the EPC. In those countries, only the renewal fees must be paid in time to claim the right of the patent retroactive to the filing date. This applies for Germany, France, United Kingdom, Switzerland/Liechtenstein, Luxembourg and Monaco. The other party states are required to submit a translation of the claims in the national language and, if the patent is not available in English, some of these party states additionally require a full translation of the specification in English or the national language.

For details see the table below.

To date, the following 13 contracting states are parties to the London Agreement:

*Sweden intends to implement the London Agreement with effect from 1 May 2008

The improvement is substantial for validations in party states belonging to the first group, considering that in 2003 95% of all issued patents were validated in Germany, 80% in France, 75% in the United Kingdom and 30% in Switzerland/Liechtenstein. On the other hand, translations still have to be filed in the other group of party states. Total savings of about 30% are estimated in average. Although the translation costs are reduced due to the waive of the full patent translation in the national language, in most of these member states a national attorney is still required to fill out required forms, set the translated claims in the required format, file the translated claims with the form, pay the fees and so on. The procedures are not becoming simpler. National law hereby protects national patent attorneys. A real improvement for the second group would be to waive or standardize formal requirements for filing the translations, without a need of a national patent attorney.

Evidently it is expected that, in the future, the party states of the first group are even more regarded for validation, since validation is free. And every validation implicates income to this state by renewal fees.
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EVELYN ZWICK (Master of Physics ETH, MBA) is a European Patent Attorney and is working with Schneider Feldmann AG in Zurich, Switzerland.