Shortly after grant of a European patent, certain formalities are necessary in order to validate the patent in the EPC (European Patent Convention) states of choice (see our information sheet, “Grant stage of European Patents” for further details on grant phase procedure). A significant proportion of the cost to patentees at this stage is due to translation of the text into the local languages of those EPC states in which it is desired to validate the European patent.

Since the London Agreement came into force in 2008, the costs incurred by translations have not been as high as they once were, although the variety of different translation requirements has made the situation more complex.

How the London Agreement works

European patents are granted in one of the three official languages of the EPO, i.e. English, French or German. States which have signed the London Agreement and have one of the EPO languages as an official language, do not require any translation of the text in order for the patent to be validated nationally (translations of the claims in all three EPO languages are still required prior to grant). The states which require no translation upon grant are:

• Albania, France, Germany, Ireland, Liechtenstein, Luxembourg, Monaco, Switzerland, United Kingdom

Other states, which have acceded to the London Agreement but do not share a language with the EPO, have nominated a “prescribed language”, i.e. which of English, French and German they will accept translations into in order for the patent to be entered into force in that country. To date, all states in this category have chosen English as the prescribed language. This means that filing and prosecuting an application in English, rather than French or German, reduces the validation costs in such states. Some of these states only require translations of the claims into their local language as set out below.

• States which require a translation of the claims into their local language (but no translation of the description):
  – Latvia, Lithuania, Slovenia, Former Yugoslav Republic of Macedonia.

• States for which translation of the description into English (if the patent was granted in French or German) and a translation of the claims into their local language meets the translation requirements:
  – Albania, Croatia, Denmark, Finland, Hungary, Iceland, Netherlands, Norway, Sweden.

To further complicate matters, a number of EPC contracting states have not signed the London Agreement.

These are listed below. Requirements in these states vary, but most require a complete translation of the specification into their local language.

• States which have not signed the London Agreement and require translations into their local language:
  – Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Estonia, Spain, Greece, Italy, Malta, Poland, Portugal, Romania, Serbia, Slovakia, San Marino, Turkey

As seen from the above lists, although it can significantly reduce grant phase costs, a disadvantage of the London Agreement is that a variety of differing translation requirements exists. Moreover, some transitional provisions apply and the requirements can differ for extension states (some of the states listed above may be classed as extension states for certain applications, depending on their dates of accession to the EPC and the filing date of the application). This makes grant phase formalities less than straightforward for many patentees.

How we can help

Dehns can advise further on the translation requirements summarised above and can attend to all steps necessary for validation of your European patent in all EPC contracting states, including arranging any necessary translations. In order to assist your decision regarding in which states to validate your patent, we can provide detailed quotes for validation costs on a country by country basis.

Furthermore, there are particular advantages for applications which have been filed in English. Due to the “prescribed language” feature of the London Agreement, a patent granted in English needs no translation of the description in order to meet the national validation requirements for 20 of the 38 EPC contracting states. This may be factor to consider at the filing stage, particularly for applicants with a choice of languages.

Further information

The above relates only to translation requirements for national validation of European patents with relation to EPC contracting states, and is based on the status of accession to the London Agreement on 1 September 2013. Some states have other formalities which must also be completed. If you would like any further details, please contact us on mail@dehns.com.