The European Patent Convention (EPC) constitutes a special agreement within the meaning of the Paris Convention for the Protection of Industrial Property, according to European Patent Guide (EPG) Chapter 2.3.001.
This means in particular that the principles of the Paris Convention on claiming priority and the national treatment principle also apply in the European procedure and to European applications.
Since nearly all the EPC contracting states are members of the WTO, the relevant provisions of the TRIPS Agreement (“Agreement on trade-related aspects of intellectual property rights”) are implemented in the revised EPC.
The European procedure has not superseded the national grant procedures. So when seeking patent protection in one or more EPC contracting states, the applicant has a choice between following the national procedure in each state for which you want protection and taking the European route, which in a single procedure confers protection in all the contracting states that you designate, according to EPG 2.4.001.
In each contracting state for which it is granted, a European patent gives its proprietor the same rights as would be conferred by a national patent granted in that state, according to the EPG 2.2.001.
The contracting states are countries that have ratified the European Patent Convention (EPC) and are thus members of the European Patent Organization (EPO).
According to Art. 64 (1) EPC, a European patent shall confer on its proprietor from the date on which the mention of its grant is published in the European Patent Bulletin, in each contracting state in respect of which it is granted, the same rights as would be conferred by a national patent granted in that State.
The official languages of the European Patent Office (EPO) are English, French and German, according to Art. 14(1) EPC.
The official language of the EPO in which the European patent application is filed or into which it is translated shall be used as the language of the proceedings in all proceedings before the EPO, according to Art. 14 (3) EPC.
Contracting states are countries that have ratified the European Patent Convention and are thus members of the EPO.
The EPC contracting states are: Albania, Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco, Netherlands, North Macedonia, Norway, Poland, Portugal, Romania, San Marino, Serbia, Slovakia, Slovenia, Spain, Sweden, Switzerland, Turkey and United Kingdom.
The extension states are European countries not party to the EPC with whom the EPO has signed co-operation and European patent “extension agreements”. The extension states are European countries.
The validation states are countries not party to the EPC with whom the EPO has signed co-operation and European patent validation agreements. However, these “validation agreements” are not limited to European countries, according to EPG 2.5.001.
After the European patent application has been examined and the European patent has been granted, the proprietor must validate it in the “contracting states”, “extension states” and “validation states” in which he/she wants to obtain a patent.
According to Art 65(1) EPC, if the European patent as granted by the EPO is not drawn up in one of a contracting state official languages, any contracting state may prescribe that the proprietor of the European patent shall supply to its central industrial property office a translation of the European patent in one of its official languages,
The period for supplying the translation shall end three months after the date on which the mention of the grant of the European patent is published in the European Patent Bulletin, unless the State concerned prescribes a longer period.
According to Art 65(3) EPC, any contracting state may prescribe that in the event of failure to observe the provisions of filing the required translation, the European patent shall be deemed to be void ab initio in that State.
Thus, the validation of the European patents is the process of converting a single granted European patent into one or more national patents.
Specifications of European patents shall contain a description and claims in the language of the proceedings and shall further contain a translation of the claims in the other two official languages of the EPO, according to Art. 14(6) EPC.
A comprehensive list of legal bases relating to validation requirements in the all of the EPC contracting states, extension states and validation states is available in the EPO’s publication “National law relating to the EPC”, specifically in the Chapter IV, “Translation requirements after grant”.
Translations play a crucial role in the validation procedure.
When it comes to translations, the Agreement on the application of Article 65 EPC – the so-called “London Agreement” – is an optional agreement aiming at reducing the costs relating to the translation of European patents, according to the epo.org, the official website of the EPO.
The EPC contracting states which have ratified or acceded to the London Agreement undertake to waive, entirely or largely, the requirement for translations of European patents, according to EPG 2.3.003.
Entry into force
The London Agreement entered into force on 1 May 2008.
Belgium’s accession to the London Agreement entered into force on 1 September 2019, Belgium being thus the latest state who acceded to this Agreement.
Art. 1: Dispensation with translation requirements
According to epo.org, the London Agreement distinguishes between:
(1) states having an official language in common with one of the official languages of the EPO (English, French and German) and
(2) states having no official language in common with one of the official languages of the EPO.
Accordingly,
(1) States having an official language in common with one of the official languages of the EPO dispense with translation requirements under Article 65(1) EPC (Article 1(1) of the London Agreement).
This provision currently applies to the following states: Belgium, France, Germany, Ireland, Liechtenstein, Luxembourg, Monaco, Switzerland, United Kingdom.
According to “National law relating to the EPC” – Chapter IV, “Translation requirements after grant”, the proprietor needs to take no action before the central industrial property office in respect of European patents granted for the countries under (1).
(2) States which do not have an official language in common with one of the official languages of the EPO may require that a translation of the claims into one of their official languages be supplied (Article 1(3) of the London Agreement).
The following states require that the claims be supplied in their official language: Albania (Albanian language), Croatia (Croatian language), Denmark (Danish language), Finland (Finnish language), North Macedonia (Macedonian language), Hungary (Hungarian language), Iceland (Icelandic language), Latvia (Latvian language), Lithuania (Lithuanian language), Netherlands (Dutch language), Norway (Norwegian language), Sweden (Swedish language), Slovenia (Slovene language).
The above states under (2) dispense with further translation requirements if the European patent has been granted in an official language of the EPO prescribed by them, or translated into that language and supplied under the conditions provided for in Article 65(1) EPC (Article 1(2) of the London Agreement).
The following states have prescribed English: Albania, Croatia, Denmark, Finland, Hungary, Iceland, Netherlands, Norway, Sweden.
In Denmark, Finland, Hungary, Iceland, the Netherlands, Norway and Sweden, the European patent may also be supplied in the national language.
The following states have not prescribed any language under Article 1(2) of the London Agreement, meaning a “more liberal translation requirement”: North Macedonia, Latvia, Lithuania, Slovenia.
According to “National law relating to the EPC” – Chapter IV, “Translation requirements after grant”, in the event of prior national rights, the European patent application contains different sets of claims for different states (Rule 138 EPC), only a translation of the set of claims applicable to the state in question need be filed.
Art. 2: Translations in case of dispute
In the case of a dispute relating to a European patent, the patent proprietor, at his own expense,
a) shall supply, at the request of an alleged infringer, a full translation into an official language of the State in which the alleged infringement took place,
b) shall supply, at the request of the competent court or quasi judicial authority in the course of legal proceedings, a full translation into an official language of the State concerned.
Article 4 – Accession
This Agreement shall be open to accession by any contracting state to the European Patent Convention and any State which is entitled to accede to that Convention.
Article 8 – Denunciation
Any State party to this Agreement may denounce it at any time once it has been in force for three years. Notification of denunciation shall be given to the Government of the Federal Republic of Germany. The denunciation shall take effect one year after the date of receipt of such notification.
Article 9 – Scope
This Agreement shall apply to European patents in respect of which the mention of grant was published in the European Patent Bulletin after the Agreement entered into force for the State concerned.
The “National law relating to the EPC” – Chapter IV, “Translation requirements after grant” contains information helping applicants to check what requirements and obligations apply when filing translations with the central industrial property office for each of the EPC contracting states and extension or validation states.
Romanian patent attorney Cristina Georgescu
