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THE LONDON AGREEMENT

THE LONDON AGREEMENT

The London Agreement aims to reduce translation costs incurred after the grant of a European patent.  It entered into force on 1 May 2008.  It applies to all patents granted after the entry into force in those member states of the EPC which have signed up to the London Agreement.

Previous Law

When an application is allowed, it is necessary to file a translation of the claims into French and German (assuming that the application is in English).  This has not changed under the London Agreement. After grant, most member states of the European Patent Convention (EPC) required the filing of a translation of the whole patent specification into the national language of the state in order for the patent to have effect in that state. The preparation of these necessary translations could account for up to around 40% of the total cost of obtaining a European patent.

The London Agreement

1.  Countries having English, German or French as an official language

These countries will no longer require a translation of the patent specification in order to validate the granted patent in that country.

2.  Countries having a language other than English, French or German as an official language

These countries will select one of these three languages (English, French or German) and will only require a translation of the patent specification into the selected language (assuming the patent has not been granted in that language).  They may require a translation of the claims of the patent into their national language.

For all countries

As previously, when an application is allowed it is still necessary to file a translation of the claims into French and German (assuming that the application is in English) prior to grant.

It may be necessary to file a translation of the whole patent specification into the national language of a country should the patent become the subject of a dispute in that country.

Countries signed up to the London Agreement

Signing up to the London Agreement is optional.  For countries not signing up, the previous law remains i.e. they may require translation of the whole patent specification into their national language in order for the patent to take effect in their country.

To date, the following countries have approved the Agreement:

UNITED KINGDOM HUNGARY MONACO
GERMANY ICELAND NETHERLANDS
FRANCE IRELAND NORWAY
ALBANIA LATVIA SLOVENIA
BELGIUM LIECHTENSTEIN SWEDEN
CROATIA LITHUANIA SWITZERLAND
DENMARK LUXEMBOURG
FINLAND MACEDONIA

Of these, UK, France, Germany, Belgium, Ireland, Liechtenstein, Luxembourg, Monaco and Switzerland fall under type 1, having either English, German or French as an official language and therefore will require no translation of the specification for validation of the patent in their country.

Denmark, Finland, Hungary, Iceland, Latvia, Lithuania, Netherlands, Norway, Slovenia, Croatia, Sweden and Macedonia fall under type 2 as they do not have English, French or German as an official language.  Denmark, Finland, Hungary, Iceland, Netherlands, Norway, Croatia and Sweden have selected English as their language for translation but require translation of the claims into their national language.  Macedonia, Latvia, Lithuania and Slovenia have not selected a particular language, but again require translation of the claims into their national language.  Albania does not require a translation of the claims or specification.

Potential Cost Reductions

The potential translation cost reduction varies depending on which countries are selected for validation.

Of course, cost reductions will be greatest where the validation countries include those which have signed up to the London Agreement although these savings may be negated by the inclusion of validation countries having German/French as an official language and which have not signed up (see Example 4).

Examples are given below for an English language specification:

Example 1 – Validation in UK, France and Germany only

At allowance – translation of claims into French and German. At grant – no further translations needed.

Cost savings – significant since translation of whole specification into French and German no longer needed.

Example 2 – Validation in UK, France, Germany, Italy and Spain

At allowance – translation of claims into French and German. At grant – translation of whole specification into Italian and Spanish.

Cost savings – significant since translation of whole specification into French and German no longer needed.

Example 3 – Validation in UK, Germany, Denmark, Sweden, Finland

At allowance – translation of claims into French and German. At grant – translation of claims into Danish, Swedish and Finnish.

Cost savings – significant since translation of whole specification into German, Danish, Swedish and Finnish no longer needed.

Example 4 – Validation in UK, Germany and Austria

At allowance – translation of claims into French and German. At grant – translation of whole specification into German (for Austria). Cost savings – none since translation of whole specification into German still required.

Example 5 – Validation in UK, France, Belgium, Germany and Austria

At allowance – translation of claims into French and German. At grant – translation of whole specification into German (for Austria).

Cost savings – since translation of whole specification into French no longer needed.

Entry into Force and Scope

The London Agreement entered into force on 1 May 2008.

The London Agreement applies to all patents granted after the Agreement entered into force for the country concerned.

Patents amended post-grant

European patents may be amended post-grant, in opposition, appeal or limitation proceedings. The situation may arise where a patent was granted before entry into force of the London Agreement in a country, but amended on or after that date.

In UK, France, Belgium, Denmark, Liechtenstein, Luxembourg, Monaco, Switzerland, Hungary, Iceland, Latvia, Netherlands, Slovenia and Sweden the new rules under the London Agreement apply in such situations, such that the translation requirements for the amended patent specification are reduced.

In contrast, in Germany, Finland and Norway the previous translation requirements continue to apply for the amended patent specification in such situations.

Please ask your usual contact for advice on specific cases.

This information is simplified and must not be taken as a definitive statement of the law or practice.