LANGUAGE AND PATENTS

1. LANGUAGE AND PATENTS Gillian Davies Montréal, 11-13 July 2005

2. Introduction • Language (translations) and patents are a major issue in Europe • It is aggravated by the recent accession of eastern European States to EU membership • Several proposals address it: • the London Agreement on the application of Article 65 EPC • the European Community Patent • the European Patent Court

3. The worldview - Languages and PCT • Filing languages of international applications Source: WIPO

4. Languages in the current European patent system • Two possible ways to obtain patent protection in Europe: • via the National Patent Offices • via the European Patent Office (EPO)

5. The national Patent Offices • Patent applications must be filed in (or at least translated into) an official language of the State

6. The European Patent Office (EPO) • The EPO has three official languages: • English • French • German

7. The language requirements on filing at the EPO • Euro-direct applications: • in English, French or German • in certain cases in another official language of a Contracting State, provided that a translation into English, French or German is supplied later • Euro-PCT application: • in English, French or German

8. The language requirements on filing at the EPO • Filing languages of Euro-direct applications Source: EPO

9. The procedural languages at the EPO • All procedures before the EPO (search, examination, opposition, appeal) are conducted in the official language (English, French or German) in which the application was filed or translated

10. The translation requirements for the European patent • Shortly before the grant of the patent: • Translation of the claims into the other two official languages • Within three months from the grant of the patent: • Virtually all Contracting States currently require a translation of the whole patent specification into one of their official languages

11. Cost breakdownof an average European patent 1) € 8,900 € 4,300 € 6,100 € 11,800 Translation in the Contracting States 38% Source: EPO 1) 8 States, 10-year term

12. Designation rate by Contracting State in 2003 Consequence of the high translation cost Source: EPO

13. Recent European developments on languages • The London Agreement on the application of Article 65 EPC • The Community Patent • The European Patent Litigation Agreement (EPLA)

14. The London Agreement on the application of Article 65 EPC • Signed by 11 Contracting States • Not yet ratified by enough States to enter into force • Under the Agreement: • States with English, French or German as an official language will dispense with the translation of the patent specification • any other State will only require a translation of the patent specification in the official language of the EPO prescribed by that State

15. The Community Patent • The proposal includes the creation of a centralised Community Patent Court • Unfortunately, it is currently bogged down in disputes over translations and enforcement

16. The language regime of the Community Patent • During the application phase, applications should be filed in English, French or German, or be translated into one of these languages • Upon grant of the patent, the claims would have to be translated into all the EU languages

17. The European Patent Litigation Agreement (EPLA) • The EPLA foresees the creation of a European Patent court with exclusive jurisdiction to deal with infringement and revocation of European patents • However, the EPLA has run into problems following the European commission's refusal to endorse the plan.

18. The language regime of the EPLA • At first instance, the language of the proceedings would be: • Before the Central Division, the language of the proceedings before the EPO • Before a Regional Division in a State having an EPO official language as official language, that official language • Before a Regional Division located in a State having either more than one or no official language which is one of the EPO official languages, any EPO official language designated by that State • Before the Court of Appeal, the language of the first instance proceedings

19. Personal experience with languages at the EPO • Problems arising from multiple languages • Impact on scientific citations in the European Search Report • Training of examiners • The EPO's International Academy

20. Problems arising from multiple languages • Different nuances of a term in different languages • Simultaneous interpretation during oral proceedings

21. Impact on scientific citations in the European Search Report • No statistics available • From personal experience, probably a very small impact, although this may vary depending on the technical field. Most prior art citations are usually in English irrespective of the filing language of the application.

22. Training of examiners • For practical reasons, mostly in English

23. The EPO's International Academy • Founded in 1997 • Provides training to judges, lawyers and examiners from countries in Eastern Europe, Russia, Africa, Asia and South America • In 2004, a European Academy was created at the EPO with a similar mission but for the EPC Member States

24. Conclusion • The language question is of economic and political importance • English predominates in the PCT and EPC systems • Compromise is required to solve the stalemate over the Community patent: the EPC regime of English, French and German has the best chance of reconciling the interests of industry with politics

25. The End Thank you very much for your attention! Email: gilliandavies@hogarthchambers.com