London Agreement Slashes European Patent Grant Costs

Article from our Summer 2008 edition of InsideIP.

Following the entering into force of the London Agreement on 1 May 2008, we are pleased to report that we are now experiencing the dramatic reductions in the cost of validating European patents that we anticipated.

Previously, for a granted European patent to have effect in an EPC state, the entire specification of the patent needed to be translated into an official language of that state. Validation of a granted patent in all of the 34 available states required translation of the patent specification into 22 different languages.  The costs of translation were by far the largest part of the costs of validating a European patent.

In the states that have ratified the Agreement, there is no longer a requirement to file a translation of the specification of the European patent, although these states may require a translation of the claims.  Currently 13 states have ratified the Agreement, and more are expected to follow.

Currently, there are no post-grant translation requirements for validation in the UK, Germany, France, Luxembourg, Monaco, Switzerland and Liechtenstein. As such, a European patent granted in English can be validated in eight states (the six listed, the UK and Ireland) without requiring any translation of the patent.  In many of these states, all that is needed now to bring a European patent into effect is to appoint a local firm to act as an address for service.

In addition, only a translation of the claims is required to validate a European patent granted in English in the Netherlands, Denmark, Sweden, Croatia, Iceland, Latvia, and Slovenia.  Since the claims typically form only a small fraction of the text of a European patent, the costs of validating in these states is considerably reduced.

Translations of the claims into French and German do still need to be filed at the European Patent Office (EPO) prior to grant.  This requirement is not expected to be removed, neither is the requirement to pay the official grant and printing fee.

The costs of validating a European patent in a state which has ratified the London Agreement have fallen by around 80 to 90%, depending on the state and the length of the specification. Total grant costs (including the grant phase before the EPO) have fallen by around 60-80%, depending on the length of the specification and the states in which validation occurs.

In terms of the effect of the Agreement on UK validation proceedings, there is no requirement for applications granted in French or German to be translated into English.  However, during court proceedings, or in proceedings before the Comptroller of the UK Intellectual Property Office, an English translation may be required.  Similar provisions apply in other states that have ratified the Agreement.

Paul Derry 01 Jun 2008

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